I wrote a post back in August '09 about the intellectual property of booze, and the various attempts to copyright, trademark, or otherwise legally restrict cocktail recipes, names, and techniques. (That was sparked by my getting a nastygram from a company wanting me to rename my "Gingerita." I chose to call it the "Litigious Bastard" instead.) A year or so later, Chantal Martineau wrote a post for The Atlantic covering the same territory, (though it doesn't draw many distinctions between copyrights, trademarks, and patents, and has some other inaccuracies.) That article starts out by mentioning a cease-and-desist threat against the Lower East Side tiki bar Painkiller:
Shortly after the tiki-themed cocktail lounge Painkiller opened its doors on the Lower East Side of Manhattan this May, a man walked into the bar and threatened to issue a cease and desist order. Pusser's, which distills a Navy-proof rum in the British Virgin Islands, trademarked the recipe for a Painkiller cocktail back in 1989. The man claimed that Painkiller's owners, Giuseppe Gonzalez and Richard Boccato, had no right to the name of the bar or its namesake cocktail, which they like to make with rums from Martinique and Jamaica. He was promptly sent packing.
As well he should have been. As it turned out, they didn't trademark the recipe (see my earlier post for some analysis on whether that is or isn't actually doable. I don't think you actually can, and I certainly don't think it's a good idea, for reasons I outline there.)
Pusser's has a relatively recent history, though their principal product is a recreation of high-strength blended rum issued to sailors by the Royal Navy since 1678. So what exactly did Pusser's trademark? It's hard to link to their search results, but if you go over to TESS, the US Patent and Trademark Office's electronic system, you'll see that among other results for "Painkiller" (such as trademarks for "gymnastic and sporting articles", clothing, and "entertainment and education computer game software", bicycles, and medication...all of which are trademarked by entities other than Pusser's), there are live trademarks owned by Pusser's for "advertising services" (for "National Pusser's Painkiller Day"), "restaurant and bar services", "non-alcoholic mixed fruit juices", and "alcoholic fruit drinks with fruit juices and cream of coconut and coconut juice."
The next trademark (actually, there are two different registrations with unique serial numbers that seem mostly identical; I'm not sure I understand this) is the one that apparently is affecting the bar in question on the Lower East Side: it's for "restaurant and bar services." Pusser's is apparently asserting that no one but them be allowed to operate a restaurant or bar named "Painkiller." (And they do operate restaurants and bars, incidentally, but they're all branded "Pusser's", not "Painkiller.") And: does serving a specific drink fall under "restaurant and bar services"? I'm not sure, but this might mean that Pusser's is asserting that no one but them be allowed to serve a drink named a "Painkiller." But hang on a second: is this kosher? Painkiller, the bar, opened in May 2010. The trademarks that I'm finding for "restaurant and bar services" were filed for in September 2010 (serial #85132301) and April 2011 (serial #85301498). (The September 2010 application also lists a "published for opposition" date of June 21, 2011, a week and a half away as of this writing. And it appears that the applicant has withdrawn the application, presumably in favor of the April 2011 application.) So how can Pusser's go after Painkiller for infringing a mark that they hadn't applied to protect when the supposed infringement happened?
On to the next trademark, the one for "non-alcoholic mixed fruit juices." (serial #76492002.) This trademark is for "Painkiller Cocktail Mix" -- not just "Painkiller"; I assume this is a bottled concoction of fruit and coconut juices, to which one adds rum and gets a Painkiller (one that tastes like it was made from bottled juices, presumably, which would probably kill less pain than freshly-squeezed. But I digress.) I'm not sure this is applicable either, as I doubt the bar in question was selling any kind of non-alcoholic fruit juice mix.
The Pusser's trademark that intially might seem to be the problematic one here is serial #76376216, on "alcoholic fruit drinks with fruit juices and cream of coconut and coconut juice." But wait a second: the man from Pusser's was claiming that the Painkiller bar owners not only had no right to serve a Painkiller cocktail, but also had no right to the Painkiller name. How would this trademark affect the name of a business? (Again, the trademarks on "restaurant and bar services" were only filed for after the bar began operation in May 2010.) Or: is Pusser's claiming to have trademarked the recipe of a cocktail? That seems difficult as well. You can't copyright recipes -- copyright law is clear on that -- and my earlier "Chilling Effects" post covered the shaky trademark landscape surrounding them.
I'm a little unclear on why Pusser's was able to get this trademark at all, actually: according to the USPTO, "a mark is merely descriptive" (and thus not eligible for trademarking protection) "under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services." Another company attempted to trademark "Moscow Mule" as a bottled alcoholic cocktail in 2007, but was denied, because "The term MOSCOW MULE may be defined as 'cocktail of vodka, lime juice, and ginger beer, traditionally served in a copper mug.' . . .This wording appears to be the generic term used in the field to identify this drink or cocktail, as demonstrated by the enclosed representative printouts from the Internet obtained by conducting a search for “MOSCOW MULE” using the Google.com search engine." It appears that "Painkiller" could easily -- and similarly -- be defined as "cocktail of rum, orange juice, pineapple juice, coconut cream, shaved ice, and nutmeg", as a generic term used in the field. As a matter of fact, that's precisely how Wikipedia defines it. And the New York Times. And Imbibe magazine, quoting Dale DeGroff. So how on earth is this trademark legit when the Moscow Mule trademark attempt was not?
Is Pusser's asserting that they created the Painkiller cocktail? Nope: on their website (which itself is strangely missing a copyright notice), they give credit to Daphne Henderson at the Soggy Dollar Bar on Jost Van Dyke. They even -- rather smarmily -- note that Pusser's founder Charles Tobias reverse-engineered Daphne Henderson's recipe. Robert Simonson quotes Tiki god Jeff "Beachbum" Berry as saying that the recipe "was invented in 1971 by George and Mari Myrick of the Soggy Dollar Bar, in the British Virgin Islands", which would make this recipe nine years older than Pusser's Rum.
Is Pusser's really upset because the bar is named Painkiller, or are they upset because Painkiller is serving Painkillers made with rum other than Pusser's? Are they following Gosling's down that road, but using it as a cudgel to go after the very name of a business concern? Not even the Soggy Dollar's site specifies that their Painkillers be made with Pusser's Rum, incidentally, and the current owner of the bar says that it was originally made with Mount Gay and Cruzan dark rums. And I don't think they went after RumDood or Kaiser Penguin for experimenting with different rums here, or the various publications linked above that described a Painkiller and gave the recipe without specifying Pusser's.
So after looking at the actual trademarks in force here, I'm still not quite sure exactly what Pusser's beef with Painkiller is. The trademarks for "restaurant and bar services" were applied for after the bar started serving. And "Painkiller" is a descriptive and widely-known name for a cocktail whose recipe is well-known and isn't a trade secret. And the bar doesn't sell cocktail mix under its name. So what's the problem? But, sadly, the outcome isn't in quite as much doubt. The Lo-Down reports that Painkiller
has been forced to change its name and give up its website as part of the settlement of a federal lawsuit in which a British Virgin Islands rum manufacturer alleged trademark infringement, according to court documents.
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 owners of the 31-year-old rum company claimed the New York Painkiller operators had refused repeated requests to surrender the Painkiller name, forcing them into legal action. . .
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.
So that's a damn shame, but I'm certainly not faulting bar owners Gonzalez and Boccato for settling and agreeing to the consent order rather than fighting this all the way through to a court decision. I'm sure that operating a cocktail bar in New York City is stressful and expensive enough without lawsuits hanging over one's head. I wish it had been litigated, though, as I don't think Pusser's had a leg to stand on in requiring Pusser's rum in a Painkiller cocktail. But litigation is time-consuming, stressful, and expensive, and Pusser's wore down an independent bar serving quality drinks.
So what has Pusser's won? They got a much-loved and well-respected bar to change its name and abandon its domain name. They got the full attention -- negative attention -- of a lot of cocktailians: aside from yours truly, Cocktails & Cologne, Bitters & Twisted, Spirited Cocktails, Liquidity Preference, Off The Presses, and three rapidly-expanding Facebook groups: Bartenders and Cocktailians Against Pusser's Rum, 100,000 Bartenders Who Won't Buy Pusser's Rum Again, and Bartenders Against Trademarking of Cocktails, which together have garnered over 800 members in a little over 24 hours of operation. Influential bartenders such as Gary Regan and John Pomeroy have weighed in, pledging to support PKNY and boycott Pusser's Rum. We'll see how much Pusser's Rum gets sold in New York now; they may have won their legal fight, but they also may have lost a much larger war for the hearts and minds of cocktailians.
I can see it now... years from now, walking into a random liquor store, maybe somewhere on the UES (I don't know why I'm there) or some other equally desolate part of town, and finding some dusty old bottle of Pusser's on the back end of the rum shelf, and laughing as I think, Ha, I remember when that brand used to be around -- what a bunch of idiots!
Posted by: Pralnakov | June 11, 2011 at 11:19 AM
Great insight here, and I'm glad that others are pointing out the June 21st opposition date.
Whether or not Pusser's should have been granted the Painkiller trademark for the drink class, they have it and they have a right to defend it. That's the law and that's business. However, the law and business also permit for a action to be filed to declare the Painkiller a generic term (like aspirin, videotape, and zipper before it). This should be the next course of action from the community -- and it would be a great way to push the trademark debate in the right direction. Law is built on precedent.
After reading up on the case, I think Pusser's had an argument against Painkiller NY, but it was a weak argument. A judge could easily have decided that a bar called Painkiller would not be mistaken for a drink of the same name (see the Opus X vs. Opus One case). And, if PKNY had simply removed the non-Pusser's Painkiller from their menu, it could be argued that no infringement was made on Pusser's marks.
What Pusser's did was simply remove PKNY's ability to oppose Pusser's "restaurant and bar services" application when it comes up for opposition on June 21st. Pusser's went all-in, and PKNY couldn't match the bet, if you will. It's all legal, it's all business, and it certainly isn't the first time it's happened -- does that mean the bartending community has to accept it? Nope. That's what great about capitalism -- the consumers get a very large say in a product's market success.
For my two cents, the following things should happen:
- Someone moves to have the term Painkiller genericized.
- Someone finds a way to oppose Pusser's "restaurant and bar services" trademark application come June 21st.
Posted by: DavidS | June 11, 2011 at 04:58 PM
BTW, have you seen this? I had heard about it a few years back:
http://tess2.uspto.gov/bin/showfield?f=doc&state=4003:6tb6qd.2.11
http://www.trademarkia.com/company-kindred-spirits-of-north-america-inc-3559985-page-1-2
Posted by: DavidS | June 12, 2011 at 01:53 PM
Way to shine a light on this one. For what it's worth, my attorney wife thinks you are right on the mark. I agree with the comment above. Someone should begin an effort to genericize the term Painkiller. What's next? Someone taking a run at Martini or Old Fashioned? I am concerned about what might happen to the ability to publish cocktail recipes on web sites. The high court has ruled consistently that recipes can't be trademarked or copy written but that the words above and below it can be. The cocktail community is thriving online these days because of the open nature of the communication. Companies swooping in and trademarking things not normally trademarked could really change the way the game is played.
Posted by: Tim | July 02, 2011 at 08:26 PM
I don't know. Its not like the Pussers company doesn't allow any bars to make the drink "Painkiller", its that the bar in NY was using the "Painkiller" name in its Tiki Bar's name. CLEARLY riding the coattails of all the investment and expense that the Pusser's company put in over all the years and introducing it to the North American Market (Over $1 million - http://www.pussers.com/joby.htm).
Look I'm a longtime Sailor and I've been to the BVI's and also sailed and been to Annapolis MD in which they have another Pussers (which is one of the few in North America). I also live & sailed the NY, NJ waters and LI Sound for over 20 years and when I think PAINKILLER I think PUSSER's. Plain and Simple. They've put the time, money and effort to promote PUSSER's which for any self respecting sailor is synonymous with PAINKILLERS.
Not that any bar can't make one - But Pusser's made it famous (with the ok of original inventors of the ~tiny~ Soggy Dollar bar in the BVI's which is called the "Soggy Dollar" because you have to anchor out and swim to the bar to get a drink ).
With that said I feel the exact same way with a “Dark n Stormy”. You can make it with a different dark Rum other than a Goslings (like for instance a Myers' and Ginger beer ~blech~) but when any self respecting Sailor thinks "Dark n Stormy" they think Goslings.
Just a little bit of perspective from a "Sailor" where I guess traditions are still cherished -- and I think most "good" bartenders and bars feel the same way. Tradition in making a classic cocktail is paramount. If not then you are just another one of those low class college bars like down Jersey Shore that serve any alchohol (usually the cheapest) and call it a "xxxx" (insert classic cocktail name here).
IMHO - Cap't Jack Sparrow....lol
Posted by: tsenator | August 16, 2011 at 11:27 PM
Here's what you do: create a signature drink with your rum, then spend years of time and millions of treasure over many year to finally - finally - achieve success and make the drink famous.
But please - please - don't trademark and protect your considerable investment. After all, if the Ronnie Come Latelys and your competitors, big and small can't profit at your expense, then why bother?
Sound silly? Of course. There are literally thousands of drinks that are unprotected and available for all the creativity these pouting bartenders wish to modify. Not to mention creating drinks of their own, and unique to their own establishment. But noooooooooo! They'd rather borrow the literal handful of protected drinks - by Bacardi, Pussers and Goslings - and ride on someone else's reputation and success. How inventive.
Finally a word from Charles Tobias of Pussers...
"Under trademark law, if the trademark owner is aware of a third party's infringement and does not move to correct it, the trademark is not sustainable if challenged in court. We could not risk losing this mark because it would've wiped out two good commercial opportunities that we see for our company’s future. Several years of work would have gone down the drain. For 8 years, we’ve been working on a Painkiller Mix and looking at the chance for a Painkiller RTD (Ready-to-Drink Painkiller in a can). Losing the Painkiller trademarks would take away all chances of success for these products. They would be unprotected in the marketplace. If they took off, under the name "Painkiller", any giant of a company like a Diageo or a Bacardi or some other could introduce a drink of the same name and we'd be out of the running instantly. We’d be dead.
Thanks to the trademark law, the little guy does have a chance. indset, but neither was there any other choice. We have to protect our intellectual property on which we believe so much of our future depends. "
We are a nation of laws, not unchecked piracy. As rum drinkers and reviewers we owe it to small distillers like the family Gosling and Tobias to respect their hard work. It's the the right thing to do, both legally and morally.
I know the Tobias family, and I can assure you that Pusser's and the Painkiller are a labor of love, with half - yes half - their profits going to the British Royal Navy Seaman's Fund. Keep that in mind the next time you substitute your house rum. Shame!
Posted by: Capn Jimbo's Rum Project | October 06, 2012 at 08:00 AM