Thursday, July 21, 2016

Trademark - Who wants a Dark 'n Stormy

     A friend recently posted a link to an article about DARK 'N STORMY(R) alcoholic drinks.  The article is a wonderful mashup of various intellectual property rights concepts.  However, most intellectual property rights do not apply to this cocktail.

     Copyright.  As discussed in an earlier blog post, there is no copyright protection over the ingredients list for a DARK 'N STORMY(R) drink.  Thus, you can distribute and make your own version of this drink using the ingredients from the official recipe -- rum, ginger beer, and lime.

     Trade Secret.  As the recipe is well known and publicly distributed by Gosling Brothers, there is no trade secret protection.

     Patent.  Assuming there was some kind of invention that was protectable in this cocktail, any patent protection would have long since expired.

      However, here is why use of the DARK 'N STORMY(R) mark is risky.

     Trademark.  Gosling Brothers Ltd. Corp., has five registered trademarks with the USPTO that include the DARK 'N STORMY mark with the USPTO.  Additionally, Gosling is on record saying that they defend their trademark rights vigorously (see article; see post).

      However, that isn't the end of the story.  The real question is what do those trademark actually cover?

Reg. No. 1657574 - Pre-mixed alcoholic cocktail, namely rum and ginger beer
Reg. No. 2011630 - Clothing, namely, shirts, hats and jackets
Reg. No. 3461485 - A kit containing Gosling's BLACK SEAL rum and ginger beer for preparing an alcoholic cocktail
Reg. No. 3747805 - Bar Services

Reg. No. 4297417 - Pre-mixed alcoholic cocktail, namely rum and ginger beer

     Thus, to any alcohol serving establishment, the relevant registration is the earliest one for a "pre-mixed alcoholic cocktail, namely rum and ginger beer".  Importantly, this registration does not specify what type of rum should be used.

    In order to understand what "pre-mixed" means, I looked at the specimen that was submitted during the latest trademark renewal (see graphic to the left).  Yes, those are cans of DARK 'N STORMY(R) cocktail.  Thus, the mark protects pre-mixed drinks, such as cans of DARK 'N STORMY(R) cocktail.

     The mark arguably could protect mixed drinks, that is drinks that are mixed on request in a bar, because there could be a likelihood of confusion between pre-mixed and mixed drinks. Therefore, if you are a bar and are using the DARK 'N STORMY(R) mark to sell a beverage, you are at risk of trademark infringement and should seek either a trademark license, or use a different name for your mixed drink of rum and ginger beer.  If you use a different name, you can let your customers know that it is the same as a DARK 'N STORMY(R) cocktail.

      Finally, Gosling has been aggressive in stating that a DARK 'N STORMY(R) cocktail must use its own GOSLING'S BLACK SEAL(R) rum.  However, only one trademark registration requires the use of that particular rum, and that is for a kit to prepare a cocktail.  Thus, Gosling is attempting to narrow its earliest registration -- rum and ginger beer -- by asserting its later registration -- Gosling's BLACK SEAL(R) rum and ginger beer (see C&D letter). Whether this attempt ultimately would succeed in a legal proceeding has not yet been tested, and I have my doubts about its viability.

- Henry Park

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