Chilling Effects, Part II: Pusser’s Revenge

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."

Let's look at these in turn. (I should state very clearly for the record here that I am not a lawyer, and I am especially not a lawyer specializing in intellectual-property, patent, or trademark law. So I'm not speaking from any position of special knowledge or authority, just that of an interested layman. If you have any actual specialized understanding, I welcome your comments and corrections.) The trademark for "advertising services" for "National Pusser's Painkiller Day" (serial #85003494) doesn't seem to interest us here. I note that "advertising services" speaks to neither the name of the bar or a specific recipe. And that "Pusser's" is an adjective modifying "Painkiller" in the slogan: they're not specifying that "Pusser's Painkiller" is a separate entity. (Interestingly enough, there are two dead trademarks — one design trademark (for a bottle's hang tag) that was cancelled, and one word mark or "typed drawing" that was abandoned — for "Pusser's Painkiller.")

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.