Rum and trademarks

Since intellectual property law and cocktails are a recurring topic here, it’s worth mentioning a couple recent developments. First, the tiki-themed craft cocktail bar Painkiller in New York has been forced to change its name to PKNY after Pusser’s rum sued over its use of the name Painkiller, a pre-existing cocktail that the company trademarked:

In the lawsuit filed April 12 in U.S. District Court, plaintiff Pusser’s Rum Ltd., which sells rum, cocktail mixers and rum products such as cakes under the brand name “Painkiller” sued tiki bar owners Giuseppe Gonzalez and Richard Boccato, claiming irreparable harm to its brand, unfair competition and unfair business practices, according to court documents on file in the Southern District of New York. [...]

The plaintiffs demanded that the bar stop calling itself and any of its drinks by the name Painkiller, for which they hold two U.S. trademarks, one for “alcoholic fruit drinks with fruit juices and cream of coconut and coconut juice,” and one for “non-alcoholic mixed fruit juices,” which they market as “Pusser’s Painkiller Cocktail Mix.” [...]

In a consent order signed by both parties May 16, Gonzalez and Boccato, along with their corporate entity, Essex Street Bar & Lounge, Inc., agreed to be “permanently restrained and enjoined” from using the trademarked term Painkiller or “any other confusingly similar term” in association with any bar, restaurant, grill, lounge or other establishment, or any “beverage, libation or cocktail” unless it is made with Pusser’s rum. They also agreed not to use the term in any marketing or advertising materials, and to give up their website domain within 45 days of the order, though the court did not require them to turn it over to Pusser’s.

Similarly, Portland’s own Trader Tiki has been forced to change the name of his line of syrups to B. G. Reynolds. He doesn’t name the company that would object to his marketing a line of tiki syrups with “Trader” in the name, but if you’re into cocktails you can probably make a good guess who that might be. (Side note: Why do these disputes always seem to involve rum and tiki companies?)

About a year ago, I was approached by the owners of another company of similar name, and asked cordially to stop calling myself a Trader and go off and do something else. I fought tooth and nail, but they weren’t having it. So, in respect to the original “Trader”, and with the advice of a few good friends, I am moving forward with the name change from Trader Tiki’s Exotic Syrups to B.G. Reynolds’ Exotic Syrups.

Naturally this is creating some ill will in the cocktail community, at least in the direction of Pusser’s, which is getting blasted on Twitter today. This is part of a general backlash against trademarking cocktail names (see the conflict over the Dark and Stormy). There’s also a lot of confusion over copyright and trademarks. Tim Lee helpfully clarified the difference last year:

But perhaps the most important difference is that trademarks have a dramatically different policy rationale from patents and copyrights. Copyrights and patents are designed to create legal monopolies that drive up the price of creative works and thereby reward authors and inventors for their creativity. Although consumers may benefit from the resulting increase in creativity, the short-term effect is to force them to pay more than they would in a competitive market. Trademarks aren’t like that at all. The point is not to limit competition. To the contrary, the point is to enhance competition by ensuring that consumers know what they’re getting. This is why it’s emphatically legal to run comparative advertising featuring your competitor’s trademarks. Microsoft may own the “Windows” trademark, but Apple is free to use it as a punching bag as long as they don’t mislead consumers about what they’re getting.

The same principle applies in the Dark and Stormy case. The point of trademark law is to make sure consumers know what they’re getting (whether it’s Gosling or Zaya), not to give Gosling a monopoly on the concept of mixing ginger beer with rum. I haven’t seen Zaya’s ad and I’m not a trademark lawyer, so I don’t want to speculate on the legal merits of Gosling’s position. But certainly the apparentl purpose of Zaya’s ad—encouraging bartenders to substitute their own rum in place of Gosling’s—is entirely within the spirit of trademark law. If the net effect of Gosling’s threats is that consumers wind up with fewer opportunities to try mixing ginger beer with different kinds of rum, that is certainly not what trademark law is supposed to accomplish.

This is a matter of trademark law, not copyright. The company actively markets and owns a trademark to a product called Pusser’s Painkiller Cocktail Mix. So while it was arguably excessive of them to sue a tiki bar with the same name, it’s not totally implausible that the bar might create confusion among customers.

A more concerning part of the settlement is the requirement that PKNY no longer offer any drink called a Painkiller that doesn’t use Pusser’s rum. Though the settlement doesn’t bind anyone else, liquor companies would love to be able to trademark popular cocktails and forbid bars from substituting other brands. This is part of what was behind the Dark and Stormy dispute, and there are rumors of one whiskey brand sending cease and desist orders to bars advertising a classic drink of the same name if they don’t use their product (I haven’t been able to confirm this, so I’m not naming it here). If this strategy continues, that would be potentially be much more restrictive of bartenders’ creativity. Whatever the legal merits of the case, Pusser’s deserves all the scorn their receiving for forcing use of their rum in a cocktail that they didn’t invent.

Dark ‘n’ Sue Me

The Dark ‘n’ Stormy is a cocktail I like on a summer day. And like any good bartender, I know that it’s generally made with Gosling’s Black Seal Rum. What I didn’t know is that the name of the drink is a legal trademark:

That’s according to two trademark certificates on file with the United States Patent and Trademark Office, which — in an exceptionally rare instance in the cocktail world — dictate the precise ingredients and amounts required to call a Dark ‘n’ Stormy, well, a Dark ‘n’ Stormy.

“We defend that trademark vigorously, which is a very time-consuming and expensive thing,” said E. Malcolm Gosling Jr., whose family has owned Gosling’s since its founding in Bermuda in 1806. “That’s a valuable asset that we need to protect.”

But a trademark-protected drink — especially one as storied and neo-classically cool as a Dark ‘n’ Stormy — seems anathema to the current bartending practice of putting creative individual spins on time-tested drinks. Drinks like this one undergo something like a wiki process: a tweak here, a substitution there, and the drink is reimagined.

As this article at Halogen Life notes, applying intellectual property to cocktails is a rare thing. (The article uses “patent,” “copyright,” and “trademark” somewhat interchangeably, but I think it generally intends to refer to trademarks.) An early example (non-trademark) is the Bacardi cocktail, which by court decision can only be made with Bacardi rum. This is understandable given the value of the brand name and the expectations of customers ordering it. Similarly, if a customer orders a Captain and Coke the bartender shouldn’t serve him a Sailor Jerry’s and Pepsi instead, at least not without asking. (Though I have to wonder if it’s possible to harm the Captain Morgan brand any more than one would do by actually serving Captain Morgan.)

Of the few cocktails that are trademarked, most are the gimmicky concoctions found in chain restaurants and tourist spots. The Dark ‘n’ Stormy is a rare trademarked cocktail that craft bartenders care about.

This would all be of merely intellectual interest if not for the fact that a competing rum company, Zaya, ran an ad in the most recent issue of Imbibe recommending its 12 Year Estate Rum in a Dark ‘n’ Stormy. According to the New York Times article quoted above, Gosling’s plans to take action protecting their trademark. Zaya responded with a press release arriving in my inbox on Monday:

Zaya Rum fully supports Mixology as an artform. By imposing a trademark or patent on a cocktail recipe one is suggesting to undermine a Mixologists’ artistic freedom. We applaud bartenders who put their personal thumbprint on a libation as an integral part of the artform; it’s what creates a recipe in the first place.

Gosling’s might be on solid legal ground, but as a craft bartender I’m firmly on the side of Zaya. I use Gosling’s in a Dark ‘n’ Stormy because it tastes good, but it’s hardly written in the fabric of the universe that no other rum pairs so perfectly with ginger beer. If another rum company thinks they’ve made a product that’s even better, I want them to tell me about it. Using unique ingredients in classic cocktails is part of what makes tending bar creative. For example, a couple weeks ago my pal RumDood wrote about his good results substituting different rums in the Painkiller, a cocktail marketed by Pusser’s Navy Rum. It’s that kind of experimentation that moves mixology forward.

Gosling’s contends that using any other rum in a Dark ‘n’ Stormy would leave customers unimpressed, decreasing sales of the cocktail and therefore of Gosling’s itself. Perhaps. The New York Times compares Gosling’s to Campari, but you don’t see bartenders throwing other Italian aperitifs willy-nilly into Negronis despite that drink’s not having any trademark that I know of. Or they give the drink a new name if they do, like the Cin-Cyn using Cynar; not because they’re required to, but because Campari really is distinctive enough to merit its own iconic cocktail. This kind of bottom-up market test is a working method of deciding when a recipe deserves a distinct name.

So when I see Gosling’s calling in the lawyers to prevent people from trying out substitutes, I start to doubt whether their rum is as good as they say it is. Hell, they’re a rum company. Would this kind of behavior impress Ernest Hemingway? Or would he mock them from his bar stool whilst demonstrating knife stunts and tossing back a daiquiri? The question answers itself!

Here’s the three-word response I’d rather see from Gosling’s: “Bring. It. On.” Dark ‘n’ Stormy competition, blind tastings by a panel of consumers and mixologists, sampled side-by-side. The loser pays for the winner’s ad campaign touting its brand as the ultimate rum for the Dark ‘n’ Stormy. What do you say, Gosling’s? Will you put your money where your mouth is?

No, of course they won’t. And I can’t say I blame them. They’ve got a good thing going with their trademark and no reason to risk losing it. But their actions have made me want to switch brands out of spite. If a “Dark ‘n’ Sue Me” shows up on my cocktail menu soon, you’ll know I found a winner.

Further discussion: Inventor’s Rock provides legal clarification and Vidiot at Cocktailians provides an excellent overview of coverage.

Update: It’s worth noting that Australian rum maker Bundaberg markets a bottled Dark and Stormy beverage. I have no idea if they have any plans to enter the US market, but keeping that particular bottle off of store shelves might be one reason Gosling defends its trademark so vigorously.