Seattle Bartenders Join Boycott of Perceived Trademark Bully
Screen shot from alleged trademark bully Pusser’s Web site
Some Seattle bartenders have banded with their New York bretheran in an effort to stop what they view as trademark bullying.
Seattle Met magazine’s Sauced Blog recently wrote that British Virgin Island rum maker Pusser’s Ltd. Corp. threatened legal action action against two New York bartenders who opened a tiki bar called “Painkiller” and mixed a drink they called the “Painkiller.”
Pusser’s owns two federal registrations with the PAINKILLER formative: PAINKILLER for “alcoholic fruit drinks with fruit juices and cream of coconut and coconut juice” and PAINKILLER COCKTAIL MIX for “non-alcoholic mixed fruit juices.” It also owns a couple pending PAINKILLER applications for “restaurant and bar services.”
The Painkiller bar’s drink contained rum, but not Pusser’s rum.
Sauced reported that a number of Seattle bartenders have joined a Facebook group calling for a boycott on Pusser’s.
Seattle bartender Jim Romdall signed on. “None of us feel like you should be able to copyright the recipe of a cocktail or the name of a cocktail,” he told Sauced. “That’s like Ragu trying to copyright ‘Bolognese.’”
A few thoughts. First, put into trademark terms, the bartenders spoiling for a boycott appear to argue that “Painkiller” is a generic term for a type of drink. I’m not into fancy drinks, so I don’t know if that’s true. But a number of bartenders — who would seem to be in a good position to know — have signed onto the boycott.
Second, this isn’t the first time STL has seen a trademark dispute come out of the name of a mixed drink. Longtime readers may have a distant memory that Gosling’s took a similar stance with respect to the “Dark ‘n Stormy” drink. They claimed the drink is made exclusively with Gosling’s Black Seal rum, a splash of ginger beer, and nothing else. In their view, if it’s not made with Gosling’s, it’s not a “Dark ‘n Stormy.” The New York Times covered that dispute. At the time, I stated that cocktail trademark disputes are rare. But now it looks like it’s not as rare as I thought.
Third, the Facebook boycott call illustrates what can happen if you’re perceived as a trademark bully. Throw your weight around with the little guy too much and you can be on the receiving end of an Internet campaign against you. That’s something that Professor McCarthy warned of when he spoke at Microsoft in February.
So for those in the know, is “Painkiller” a type of drink? Or is it a specific drink that’s made with Pusser’s rum?
For what it’s worth, Wikipedia declares that “Painkiller” to be a rum cocktail “traditionally made by frothing a mixture of dark rum, orange juice, pineapple juice, sweetened coconut cream, and shaved ice, and a topping with nutmeg.” It doesn’t mention Pusser’s. Again, for what it’s worth.
Great additional discussion at Cocktailians, my new favorite blog.
Michael Atkins
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Reader Comments (2)
I'm no lawyer, so I'm not sure if I'm properly reading the trademark certificates in TESS. It appears to my untrained eye that there are two issues: one with Painkiller (the bar) serving Painkillers without Pusser's rum, and one with them being named Painkiller. I'm not sure which one was the deal-breaker, and since the applications related to "bar and restaurant services" postdate the bar's existence, I'm not sure how much of a leg they have to stand on. Serving Painkillers without Pusser's Rum is confusing to me too -- although Pusser's has a trademark on "Painkiller" as an alcoholic beverage, that trademark says nothing about the recipe or that the drink be made with Pusser's (that's implied, as I see it, given who owns the mark.)
As I mentioned in my piece you linked to, I don't know why Pusser's was able to register that mark anyway, considering that there's decent evidence that a.) "Painkiller" is a descriptive name and generic term. That's why the 2007 trademark attempt for "Moscow Mule" failed miserably; b.) Pusser's doesn't claim to have invented the Painkiller cocktail, and c.) the Soggy Dollar Bar came up with the Painkiller at least nine years before Pusser's was established.
The closest parallel I can think of is the Bacardi case, in which a New York appellate court ruled in (I think) 1937 that the "Bacardi" cocktail only be made with Bacardi rum. However, that drink's name is the same as a corporate name, and I'm not sure if that was a trademark case.
Seattle's bartenders' calling Pusser's a trademark bully is extreme. The term "trademark bully" is thrown out far too often these days and should be limited to the clearly egregious examples. It seems it has become almost an innate reaction when a C&D is sent, and especially when the receiving party is much smaller than the sending party.
Pusser's has registered marks, the significant word incorporated of the marks is being used, and the goods / services are very closely related. Pusser's actions are altogether reasonable. And while the bartenders may have an argument that the mark has become generic, that certainly doesn't transform Pusser's into a trademark bully. That term should be reserved for mark owners that clearly overstep the scope of their rights - not the case here.