Cease and Desist
Aloha, kakou!
Recently I posted a blog entry in which I tasted a variety of inexpensive dark rums with the goal of determining which one tasted best when mixed with ginger beer. In the context of the article, I referred to the combination of dark rum and ginger beer as something other than, but similar to “Dark ‘N Stormy®”. The good people at Gosling’s were kind enough to have their attorneys at Abelman, Frayne & Schwab at 666 3rd Avenue in New York City send me a letter informing me that insodoing I had violated two Gosling’s trademarks.
They kindly requested that within five days I remove from my blog all references to names for said combination that weren’t “Dark ‘N Stormy ®” and publish a retraction stating that “Dark ‘N Stormy ®” is a registered trademark owned by Gosling’s Export (Bermuda) Limited for a cocktail made with GOSLING’S Black Seal® rum and ginger beer.
They were also kind enough to inform me that if I chose not to remove the post, I could be subject to injunctive relief (they get a court to take it down for me) triple damages as well as attorney fees.
Of course I immediately removed the post from my blog and am now posting this retraction to avoid further legal issues and ensure that everyone knows that a “Dark ‘N Stormy ®” is a registered trademark owned by Gosling’s Export (Bermuda) Limited for a cocktail made with GOSLING’S Black Seal® rum and ginger beer.
Thanks to this experience, I now realize that I am not worthy to speak about rum-based highballs, much less write about them. I will never again discuss drinks containing cane spirits and brewed ginger-based beverages unless using the proper legal terminology. This I promise you.
Very truly yours,
Josh Miller
Humble Servant
Trackbacks
- “Rum and Ginger” all over the place—how highbrow belongings performs out on the bar – Best Tech
- “Rum and Ginger” far and wide—how highbrow assets performs out on the bar – Talking About Tech
- “Rum and Ginger” everywhere—how intellectual property plays out at the bar – News Tech Dude
- “Rum and Ginger” everywhere—how intellectual property plays out at the bar – Our Healthier World
- You’ll be able to’t copyright a cocktail, so what’s an artistic bartender to do? – Amazing tech
- You can’t copyright a cocktail, so what’s a creative bartender to do? - WIGO Science News
- You can’t copyright a cocktail, so what’s a creative bartender to do? – About tech
- You can’t copyright a cocktail, so what’s a creative bartender to do? – TechBits
- You’ll be able to’t copyright a cocktail, so what’s an inventive bartender to do? – True tech
- You can’t copyright a cocktail, so what’s a creative bartender to do? – Beginner Tech
- - Parc d'attraction - tous savoir
- You’ll’t copyright a cocktail, so what’s an inventive bartender to do? – Technology Blunders
- You can’t copyright a cocktail, so what’s a creative bartender to do? – Middle tech
- You’ll’t copyright a cocktail, so what’s an inventive bartender to do? – Right tech
- You’ll’t copyright a cocktail, so what’s an artistic bartender to do? – Easy tech
- You can’t copyright a cocktail, so what’s a creative bartender to do? - nbiznews
- You’ll be able to’t copyright a cocktail, so what’s an artistic bartender to do? – My Blog
- You can’t copyright a cocktail, so what’s a creative bartender to do? - Technorites
- You can’t copyright a cocktail, so what’s a creative bartender to do? – UK 09 History
- You’ll’t copyright a cocktail, so what’s an artistic bartender to do? – Technology World
- You possibly can’t copyright a cocktail, so what’s a artistic bartender to do?
- You can’t copyright a cocktail, so what’s a creative bartender to do? – Wall Street Chronicle
- You can't copyright a cocktail, so what's a creative bartender to do? | Tips Tech News
- You can’t copyright a cocktail, so what’s a creative bartender to do? - scoreit.online
- You can’t copyright a cocktail, so what’s a creative bartender to do? - The Entrepreneur Fund
- You can't copyright a cocktail, so what's a creative bartender to do? | GREAT NEWS
- You can’t copyright a cocktail, so what’s a creative bartender to do? – Blockchain News Link
- You can’t copyright a cocktail, so what’s a creative bartender to do? – My Home Tech Reviews
- You can’t copyright a cocktail, so what’s a creative bartender to do? – CyberSide Tech News
- You can’t copyright a cocktail, so what’s a creative bartender to do? – makitzo
- You can't copyright a mixed drink, so what's an imaginative bartender to do? - Science and Tech News
- You can’t copyright a cocktail, so what’s a creative bartender to do? - USA DAILY NEWS
- You can’t copyright a cocktail, so what’s a creative bartender to do? – USA.BEWIN
- You can't copyright a cocktail, so what's a creative bartender to do? | Tech News Worthy
- You can’t copyright a cocktail, so what’s a creative bartender to do? – NuclearCoffee
- You'll’t copyright a cocktail, so what’s an inventive bartender to do? – Pinoy Lambingan HD
- Vous buvez probablement des Dark 'n Stormys illégaux. Vous faites probablement aussi une mauvaise boisson.
- Dark ‘n Stormy + Trump & Stormy. | Proof Cocktails
- Vous ne pouvez pas protéger un cocktail par copyright, alors qu'est-ce qu'un barman créatif peut faire ? | Nouvelles techniques
Inu A Kena 
I am so glad you posted this retraction. I almost made the mistake of buying something made by Gosling’s, which is a registered trademark of Insanely Aggressive Lawering, Inc.
yep, might have bought my last bottle of Gosling’s I can find other rums without the lawyer dogs. Coruba and Myers’s come to mind immediately in the “not really aged” category.
Not for nothing, the lawyers hang out under the numbers 6-6-6. Coincidence? We think so.
That is a real shame, but I’m glad you posted this important review of a specific brand of cane spirit so I can be certain to stop buying their product(s) and I will let others know to do the same.
I noticed that many other big names on the web use the name for the cocktail include the word “and” instead of the shortened version in the middle. It seems Esquire and Rachel Ray have got away with “trademark dilution” of the “vigorously enforced” name and have even suggested that other rums might work thereby “misleading and confusing” the public.
Anyway, shame on theme for bullying bloggers. I think they’re “damaging the goodwill and reputation” of their brand quite well on their own.
Keep your head up, you do a great blog here and I value your opinion on cane spirits more than any trademark/brand name protection can ever buy. Seriously.
I wish I was a billionaire. I would literally shower you in money so you could give them a legal battle they could not sell enough rum to ever afford.
Yeah. I love making myself Rum Mules. Using fine cane spirits and ginger beer. I brew it myself a lot! One thing I would never do though, as it would surely ruin my great tasting rum mule, is put a Goslings product in it.
You join some really good company. Like Jackson Cannon of Eastern Standard who publicly announced he was making a Painkiller on his menu without Pusser’s rum and dared them to stop him. Well, they did many months later, and now Eastern Standard call it the Trade Marquis (or something similar) on the Tikisms section of their menu.
The trademarking of a cocktail name like this just strikes me as crazy. Returning to my original review of Gosling’s I wondered if I had made a similar faux pas. I guess either i phrased it right or they figured since I was in Canada they wouldn’t bother. But I swore I would never buy another bottle of their product as a result…my one-man battle to get this kind of crap dispensed with. My sentiments are entirely on your side, dude.
Somebody should indict the country of Jamaica of such recalcitrance. I had a plethora of highballs there containing one or another brand of dark rum and ginger beer and not once was the rum brand Goslings. Oh the humanity!!!
Intellectual property laws, specifically Trademarks, are restricted to geographic area- for example, in Australia the name “Dark ‘N Stormy” is owned by popular ginger beer manufacturer “Bundaburg”, not Goslings. The Gosling Brothers spend decades and millions creating then promoting the “Dark ‘N Stormy” in Burmuda using their rum, and only trademarked the name when cheap crappy rum companies started spreading their drink to the U.S., trying to benefit from all the decades of work and money that Gosling spent. There are only a handful of cocktails trademarked, because it’s messy and hard to do, so if a cocktail is trademarked its for a good reason
I’m going to have to be the odd man out, and continue what began on the thread in question, best done by quoting moi in our long exchange there…
“What’s more important to us all – pushing the edges, or doing the right thing? I’ve never had the pleasure of meeting Malcolm Gosling, but I favor helping him to protect his families’ hard work to establish both a fine rum, Gosling’s Black Seal, a wonderful ginger beer (again Goslings) and a protected signature drink using them.”
Earlier, I’d pointed out what I’d strongly believed was a likely trademark infringement, a position with which Josh just as passionately and respectfully disagreed. I pointed out that corporations like Coca Cola, McDonalds and Malibu, Bacardi and Pussers invested millions in their trademarks and were forced to defend them aggressively or else lose their rights to the public domain. Examples were provided, including Malcom Gosling’s own statement that their property rights were “aggressively defended”. Our long exchange was detailed but mutually respectful, good on Josh.
We agreed to disagree.
There’s a big difference though when one gets a letter from a New York law firm. As has been elsewhere so well said, such an experience focuses the mind wonderfully, and arguments that sounded terrific on the net suddenly become hollow and unreassuring.
All said, I’m sure sorry Josh had to experience what must surely have been a shocking experience, but as rum afficianados and reviewers it falls upon us all to support the few remaining family distillers like the Goslings (Black Seal), Tobias (Pussers) Richard Seale (many) and the Gardier family (Barbancourt) who have spent much time and personal treasure to create the fine products we enjoy.
All of these rum families have the right and duty to protect their hard won property and successes, valuable rights that all rum lovers and reviewers must honor and respect. It’s the right thing to do. Josh got a relatively free pass on this one – for which I assume he is very thankful – but that should provide a valuable reality check and object lesson for us all.
In sum, I think Josh is one of the good guys, and I like his blog, which I consider well written and entertaining. He is a young man after my own heart – creative, intelligent, well-spoken, respectful and quick minded, and an asset to what is really the very small world of rum reviewing. He and we all have much to learn. I believe he made an honest mistake, forgiven by all including the Goslings.
To all: to our health and good cheer!
Just real quick Jimbo (on my phone)
A dark and stormy per Goslings for many years was goslings black seal rum and Barritts Ginger beer. So the claim that this trademark is anything but them grubbing after money rings false.
They crafted no ginger beer, they didn’t invent the drink, they copyrighted it, and market it.
I beg you not to confuse the two. People have been drinking that drink before goslings and will afterwards. Same with painkillers in spite of peseta protestations otherwise.
Make your rum and shut up, stop trying to yell me such and such drink must be made with your booze, make your booze taste the best in the drink and you have no problems.
Like a zombie and lemonhart 151
Gil not sure I get your point. If the drink traditionally used Goslings before the trademark, then legally used Gosling’s afterwards, if Goslings has invested millions in the name, and if Gosling’s wants to protect both the traditional and legal usage of their fine product, then isn’t this a distinction without a real difference? All businesses – indeed all of us – work hard to make money and invest it to make a profit, and further, to protect our property whether it be our homes or a name we have had the wisdom and foresight to protect.
The world is rich with people who failed to protect their work, or whose work was purchased and promoted by a large corporation who did so. The United States (and other) governments saw fit to grant the Gosling family trademark protection for good cause. They obviously made a good and valid application and it was approved. A done deal.
Anyone is free to create any drink using dark rum and ginger beer now, but they must create and protect their own name, which can no longer be “Dark ‘N Stormy”, as we are a nation of laws respecting property rights.
And remember: corporations are people too, lol… and btw, can I borrow your car?
You mentioned they created the rum and the ginger beer both,
Which they didn’t (create the cocktail or the beer). They are doing the equivalent of patent trolling in the tech biz.
a DnS has nothing to do with Black Seal and it’s quality as a rum. they are trying to take a cocktail they did not create (effectively a highball) and assert ownership rights thru legal maneuvering.
Their rum is fine, this BS about DnS has nothing to do with their rum.
I don’t support that.
I don’t support threatening your most valued customers. And I certainly don’t support the notion that they “Own” any rights to that cocktail or that name.
Just because a lawyer sayth don’t mean it is true or right.
I understand intellectual property, and copyright. This is creating a rights managed property from something that is and should be in the public domain.
As I mentioned, a Dark and Stormy was classically Black Seal, Barritts and Lime. They have bought or created some ginger beer and are private labeling it Goslings Ginger Beer, and are saying you must use our product or you can not make this drink, or we will pursue you legally. It is garbage. Just like if Barcardi and Coca-Cola tried to do the same with a Rum & Coke.
I don’t regard Goslings as having any “Property Rights” in a Dark ‘n Stormy or a Dark and Stormy or a Dark & Stormy.
And I find the fact that they are harassing Josh (an advocate for their product and culture) repulsive.
Repulsive to the point where I am not really going to buy any more of their rum.
I too, am an advocate and consumer of an abnormally large amount of cane spirits. Like Josh, I am not the person you should be picking fights with. I am your BEST customer and advocate.
Dumb business acting like this.
Cheers!
Pusser’s in a painkiller 😉 damned autocorrect.
Jimbo is just a troll. Don’t feed the trolls.
I viewed the thread and it sure was interesting to say the least. Bottom line though is that trademarks are property rights that we all have and expect to be honored. It’s just like Crest toothpaste, they own the recipe and no one can suggest any other recipe using that name, which they own.
Gosling was right, it’s their recipe and based on that letter, Josh was pretty lucky that he was given a way to make things right. It could have been much worse.
AltView,
Goslings did not “create” this recipe. This is a highball. I don’t know where the notion of putting two things and a squeeze of lime became a “Recipe” or something subject to copyright.
People have been drinking Rum/Ginger Beer and lime as long as those two things existed. just like people have been drinking gin and tonic, and rum and coke, a bourbon and coke.
The notion that it is reasonable or acceptable to copyright a highball is about as valid as the fellow that patented toast.
http://www.google.com/patents/US6080436
So, I suppose from now on, we shall all Cease making a “Dark ‘N Stormy” and always make sure to make “Darhk and Stormee” or “Dank ‘N Stormy”. They can’t sue you for that. You can’t register a recipe, just a name. I asked The Bum and Marting Cate about this, as I figure if every bar that serves The Bum’s recipes were giving him a royalty, he’d be doing all right by now. Martin says that another bar went so far as to exactly copy his menu.
I really don’t think they have a legal leg to stand on, other than perhaps that exact spelling.
I call my version a Foul & Swarthy. Sure, it sounds about as appetizing as “a nice greazy pork sandwich served in a dirty ashtray” but it tastes delicious because I can use my preferred rum brand (Weird Science).
Five bucks says “Captain Jimbo” ratted you out to them. He’s done it to other people.
Now come someone please make me a Dork N Smarmy?
What have I ever done to make you treat me so disrespectfully? If you’d come to me in friendship, If you’d spelled my name correctly, then this scum that wounded your delicate ego would be suffering this very day. And if by chance an honest man like yourself should make enemies, then they would become my enemies. And then they would fear you.
Anonymous: “Be my friend – Capn Jimbo”.
[Anonymous bows toward the Capn and kisses the Capn’s hand]
Good, and I trust you speak more respectfully of me in the future. Someday, and that day may never come, I’ll call upon you to do a service for me. But until that day – accept my Dark ‘N Stormy as a gift on this special day.
Anonymous: “Grazie, my Capn”.
Go in peace. Prego. Give this to, uh, Clemenza. I want reliable people, people who aren’t going to be carried away. After all, we’re not murderers, in spite of what this undertaker thinks.
Horrible public relations from a business whose life-blood is public relations. The legal strategy is nearly irrelevant in the face of the damage they have done to their brand.
Here’s a concept. Why don’t you invent a drink, name it, make it your signature drink, and spend a few million dollars marketing and promoting it until finally – after much time and treasure, and much good fortune – your drink becomes famous. But please – please DON’T trademark or otherwise protect it!! That way a bigger corporation, or a bunch of small ones can simply come along, borrow and use your name, and profit from your investment to sell their own versions using the same name.
After all if your competitors can’t profit from your hard work, what’s the point?
The Gosling family and Pusser’s Tobias are really very small and independent distillers who took the time and effort to promote their rums and their signature drinks. You really need to have an open mind – let’s hear it from Charles Tobias of Pussers….
Charles Tobias:
“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. So this is what we sought to protect. This is why we waited more than a year for a positive response from PKNY. Finally, the lawyers said if we waited any longer, we would be jeopardizing our trademark position, and really a good part of what we see as the future of our business. It was a hard decision, and I hated to take the step. There was no anger or the “let’s get ‘em” mindset, 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 wish Giuseppe Gonzalez and Richard Boccato great success with their venture, and hopefully in the near future we will be working with them on the common goal of increasing the success of our two businesses.”
To give you an idea of how small these two distillers are, Pusser’s makes less money than most popular big-city bars, and even then gives half – yes half – of their profits to the British Royal Navy Seaman’s Fund. It is a labor of love.
Personally I support both families. We are a nation of laws. Not least, it’s simply the right and moral thing to do. I urge all to have an open mind and realize how hard it is for small distillers to survive in a world of giants like trademarked Bacardi and Coca Cola.
Please support them.
I don’t believe Pusser’s created the Painkiller, I believe the Soggy Dollar Bar in JvD did, and their claim to ownership is just as flawed as Gosling’s.
Family business or Diagio does not matter. They do NOT own the intellectual property they are placing claim on and pursuing vigorously.
If you wish to copyright a cocktail, you should create a cocktail worthy of copyright and then promote it. Not take a cocktail someone else made, or was in the public domain, and declare it your property.
They are using the letter of the law to violate the spirit of it for their own profit. You may wish to support that Jimbo but many won’t and don’t.
Pusser’s and Goslings both make fine rum. They should stick with that, and stop trying to steal culture and appropriate it.
The world could use less swill like “Painkiller RTD” and more actual quality rum.
As a Rum Blogger, I would expect you would be on board with that.
Gil, the Soggy Dollar story is just that – a story. Even so, as reported Tobias claimed that he could make a better “Painkiller”, did so and his version – using his own recipe – won at the bar. He then bought the name for use everywhere else but at the bar, who both agreed would continue to use the name.
But all that is hearsay anyway. First use of a name is irrelevant. Remember first filing – available to anyone – takes significant precedence over first use, again assuming that the trademark will also survive the many requirements, which in Pusser’s case, it did. The copyright was filed, the public had ample opportunity to object, and it was approved.
See my comment of November 22nd for more details. Sorry but it’s a bit late to close the barn door. The Soggy Dollar is a cute story, but nothing more.
It’s pretty obvious that Gosling’s publicists are not in touch with their legal department. Because simple, unpaid blogs like this create buzz. For free. When one’s opening move is to attack with flaming lawyers, you will be perceived as a dick, and small businesses can not afford to be perceived as dicks.
How much easier and cheaper would it have been to have sent out a nice-gram first, thanking Josh for the kind words he’s had to say about their products and asking for his understanding of their position on the trademarked name thing. And save the nuclear option for a last resort.
If it were my blog, I’d remove all references to anything Gosling. This blog doesn’t need the threats and Gosling, apparently, doesn’t need this blog.
Perhaps you missed the original thread. A couple of posters did express the opinion that this was trademark infringement, and not fair to Goslings and said why. Josh resisted this several times; his position was that he didn’t think it was, that Goslings wouldn’t care, and that he’d use the Electronic Freedom Foundation to defend his case. He was mistaken on all counts.
Last, it was Josh who chose to post the lawfirm’s private email to him and make it public, no doubt with the objective of currying sympathy. This article really is a bit tongue in cheek, and expresses quite a bit of sarcasm aimed toward Goslings, like “They kindly requested”, “They were also kind enough to inform me that” and “Thanks to this experience, I now realize that I am not worthy”.
All pretty sarcastic and none of which was requested by Goslings. Pouting, poor me stuff. I didn’t mean to run the red light and hit another car, but the mean officer gave me a ticket and wasn’t very nice.
If Gosling’s first contact was through their legal department then they earned the ill-will. This blog isn’t a business, it’s free publicity, whether good or bad. Josh lost nothing, Gosling lost customers.
“Magical expanding, multi-purpose testicles is another reoccurring theme in Tanuki folklaw. As early as the 1840, Ukiyo-e woodblock print master, Utagawa Kuniyoshi, made an interesting series of Tanuki prints showing them putting their magical testicles to use. Here’s a couple of examples, weight training and clubbing a catfish to death.”
Like the Tanuki of Japanese mythology, methinks this subject has been beaten to death, lol… as for me, I bought the fresh fixin’s for a Pusser’s Painkiller to accompany my smoked Mojo chicken and testicles, er, potatoes (patent pending).
Did Gosling’s also trademark the word “douchebag”? Will I be threatened for saying Gosling’s is a douchebag company? (Yes, I know they don’t the own the trademark to douchebag, as Goldman Sachs and Wal-Mart are fighting over it in court, too.) They just lost a customer. I’m glad Josh posted the letter, because it shows the company is far more interested in walking around with sticks up their asses than developing new products I may care to purchase.
I mean, how dare this blog suggest that some other rum may possibly taste better in a Dark ‘N Stormy? A Manhattan is properly made with rye whiskey, but the City of New York doesn’t get to fire off legal letters if someone says they want a Manhattan made with bourbon or Canadian whiskey. A martini is gin and vermouth. Tanqueray can’t trademark the term ‘martini.’ Sorry, but a Dark ‘N Stormy is just dark rum and ginger beer. But their legal team paid enough lobbyists and government, so they own it. Douchebags.
I’m sure ignorance is not trademarked either, and as we all know, ignorance of the law is not a defense. As so well put by Charles Tobias of Pussers, trademark law is a great benefit to the small businessman and independent inventor, who can now protect their named product and it’s method or recipe.
Copyright and trademark protect all who apply, especially the little guy, and levels the playing field.
The Gosling family went to great expense to petition our government, and to apply for a patent. Anyone can apply – you can too- and this does not require lobbyists. In accord with the law, allother citizens and other businesses had the opportunity to contest the application. None did, and the application was considered valid, valuable and warranted. Thus it was granted by the Office of Copyright, and the name “Dark N Stormy” became a registered and approved trademark, and the rightful property of the Goslings.
Simple, legal, proper and achieve by honest, open and due process. If you did not object, shame on you..
In this society we all are expected to respect property rights. Perhaps you own a home. No one can trespass on your property, poop on your lawn, or use your picnic table without your permission. None of us would tolerate anyone violating our property rights, or using our good names illegally.
Namecalling is childish.
Fine. Go get a cease and desist letter when I come and poop on your lawn, oh priveleged Cap’n Jimbo. The law is commonly used to oppress free speech and the rights of the common man. That is why we need the ACLU. Doesn’t matter. You are going to respond with some smarmy, legalistic comment because you always need the last word. Yet the damage is already done and Gosling’s has lost more than a few customers.
My best to you and your family this holiday season! Please let my assistant know when you plan to drop by and drop one of your uh, ripe comments,, and she’ll leave out some cookies, milk and a roll of Charmin for ya…
Jim, through all this you never answered my point on the drink in question being a hi-ball and predating their licensing/promotions/threatening letters.
Also get a Painkiller in at Soggy Dollar in Jost Van Dyke, and it doesn’t have Pusser’s as much as I like and respect what they do for the Navy the rights management is garbage and is an attempt to commodify (as your quote indicates) something someone else created.
Exactly the same concept for both DnS and Painkiller at work.
We are trying to monetize a property we didn’t create and enforce rights that, frankly we (the distillery) have no actual right to.
When you can show me that the Gosling family or their employ created the first Dark n Stormy, or that the Pusser’s folks (who licensed the Royal Navy Formula, and thus donate a portion of their profit to the same) created the first Painkiller, I will be more willing to listen to this faux ownership notion they have over these cocktails.
Next Bacardi will copyright the Daiquiri.
The notion that i should care about Pusser’s trying to crappify a Painkiller-in-a-can under the notion of intellectual property is laughable.
I understand your legal argument, as well as the notion of supporting small business. but these companies are patent trolling, not developing products, and I don’t support that.
There is no cause to make light of the law, particularly trademark, copyright and patents. These property rights protect the owners, and benefit individuals and businesses of all sizes. These are clear and legal rights deriving from an open, respected and legal process.
It’s clear you don’t understand the difference between first use and first filing.
These protections are not easily earned. First, you – the applicant – must make application to register what you believe is a valid trademark. Your application, along with all other applications, are taken in the order of filing, which can take up to six months or more, at which time the government (a public attorney) who determines if the application meets all the requirements to qualify for a trademark. Many are denied.
Most important as far as you are concerned is that the proposed trademark not merely descriptive or likely to cause confusion with a pre-existing applied-for or registered mark.
If there are any doubts, the applicant has the opportunity to contest the refusal, or answer any concerns by the Office. This back and forth may go on for some time. If finally approved, there are still more hurdles – the proposed mark is published publicly to solicit opposition. Other distillers, bar owners, corporations or really any individual has the opportunity to object and to state their reasons. The Office will take these into account, and may still deny the application. First filing carries far more weight than first use.
Finally – finally – the mark is granted and the trademark is approved as reviewed and becomes defensible property. But this is just the beginning. Trademark infringement is common, and unless vigorously defended the trademark risks reverting to the public domain and the property – obtained via literal millions in time, promotion and marketing – is lost.
Remember first filing – available to anyone – takes significant precedent over first use, again assuming that the trademark will also survive the many requirements. Last, and as far as “trademark or patent trolling” is concerned, you are misinformed. The definition…
“… a pejorative term used for a person or company who enforces patents/trademarks against one or more alleged infringers in a manner considered aggressive or opportunistic with no intention to manufacture or market the product.”
Key words: …with NO intention to manufacture or market the product. These are non-existant products for the most part. These trolls buy or file literally thousands of patents or trademarks and then simply sit on them, and wait for someone to actually create the product. Their goal is to then file an infringement, hoping for huge settlements, often in the millions, forcing the new kid to cough up part or all of his business.
Example: Perhaps you file a patent on a “time machine”. Although you don’t own such a machine and haven’t made one, when some company finally does (and stands to make many millions of dollars) you then “enforce” your patent, and settle for a few million dollars, and go on to your next victim.
Obviously Pusser and Goslings, who invested millions in a single product, which they have and do widely manufacture, are anything but trolls. Indeed, they actually have to defend their rightful property from the vultures who’d like to make money selling an altered recipe under the same name.
Remember, first use is relatively meaningless. Any individual who failes to legally protect their identity and product is a fool. The notion of trademark, copyright and patent are well established principles and rights used for well over a hundred years. Those who fail to establish or protect their property, or to object to the filing of others must live with their loss.
You’re a couple decades late and a couple millions short…
“Remember first filing – available to anyone – takes significant precedent over first use”
Interesting. IANAL. Are you a lawyer, particularly one that specializes in IP law? This article from a law firm specializing in such seems to contradict your assertion:
http://legalteamusa.net/tacticalip/2013/04/01/trademark-law-first-to-use-v-first-to-file/
“In the United States, it is not registration, but actual use of a designation as a mark that creates rights and priority over others. Thus, the rule is that ownership of a mark goes to the first-to-use, not the first-to-file.”
In addition a cease and desist letter, just means the mark holder believes there is an infringement that they feel like they need to take action on. A court would have to determine if this was actually the case. I’m curious if Gosling’s has ever had to fight this and won, or if all they have served C&D’s to have just given up. Firms like this seem to count on little guys like Josh not having the funds to pursue their rights.
Screw Gosling’s. They trademarked a three ingredient “cocktail” any dickhead can make so we’d all be forced to use their heavily sugared rum.
“They trademarked a three ingredient “cocktail” any dickhead can make so we’d all be forced to use their heavily sugared rum.”
Your enthusiasm to defend your fellow “dickheads” is noted, but no one is forced to use Goslings. They just can’t use the name, no more than they can call a dark soda a “Coke”. Use the ingredients – with any rum you choose – but call it a “Dickhead and Stormy”…
Next…
“In the United States, it is not registration, but actual use of a designation as a mark that creates rights and priority over others. Thus, the rule is that ownership of a mark goes to the first-to-use, not the first-to-file.”
I just love the barstool expurts whose goal seems to be find an isolated quote, parsed out to make an isolated point. Call it advanced trolling. The article is actually referring to a potential competition for ownership of a trademark among two or more parties.
All other things being equal, ownership may – I repeat may – be won on the basis of first use, rather than simple registration. This was not the case insofar as Gosling’s trademarked “Dark and Stormy”.
There was no competition whatever. No other party attempted to trademark the name. Goslings went through the very long and arduous process of filing for the trademark, demonstrating their long use of the name, the drink and its ingredients. Furthermore Gosling successfully demonstrated that they were first to use the recipe later called the Dark and Stormy. While a coterie of bartenders may – may – have used the name, they were clearly not first to use the recipe.
All presented to the government, properly reviewed, made available for public comment or competitive claims (there were none), and finally granted trademark. A long and expensive process by a very small distiller with a truly wonderful history.
Frankly I’m also sick and tired of those who try to postion Gosling’s as the big bully, using legal threats agains tiny bars, etc. Nothing could be further from the truth – Gosling is actually a relatively small distiller who spend hard earned millions promoting their unique Gosling’s dark rum and the drink that has been, and will forever be its flagship drink, much like the Pusser’s Painkiller against huge international corporations.
The clearly uninformed dissent above that speculates that Gosling has never had to really go court is dead wrong. This is yet another example of cheap shot trolling. Example: Gosling’s sued and won against Zaya who attempted to promote a “Dark and Stormy” using their own rum. Another: little Gosling felt forced to take on Pernod Richards for the same issue, as this giant tried to substitute their then Malibu rum (ugh) for Gosling’s.
The point – like it or not (I honor the Gosling’s and also Charles Tobia of Pussers). – these trademarks were hard won and hard defended against some might big corporations who attempted to squash these small companies (eg Pusser’s profits are less than that of a successful NY bar).
We live in a nation of laws. Patent and trademark protection are open to all, and in many cases is the only way a small company can protect their products and services against the mega-corporations who continue to cheapen the brown spirits they acquire and/or force out of business.
Support these small distillers and their unique products.
Jee. I believe no one that ever used the phrase : “we live in a nation of law” was ever in an unprivileged position. And in the U.S I think this even more a joke. I mean comon, slavery was legal, and as of now the laws of your nation thinks that money funding an election campaign = speech and that more of it = more free speech.
Since you feel very comfortable inside a box defined by set of rules that you know very well, so much that without them you’d probably loose your identity as an intellectual prick, I say let’s definitely go outside that box and repeat something that was mentionned earlier by other folks here : while Gosling might be right by the letter of the law, they absolutely dead wrong from a public relations standpoint. I am a canadian, and as a former blogger and rum fan, I share the moral and ethical sentiment generated by this story. Gosling’s rum arrived very recently in the province of Québec and I don’t buy them specifically for that reason. I also told A LOT of people, rum people here, about this. So this is travelling. There is absolutely nothing Gosling could gain from what they’ve done with Josh. He is an independant blogger. He didn’t want to sell a new bar, or another rum. He’s doing honest reviews for the people who like rum. If you send legal threats to someone like that, you will hurt your brand in proportion of the blogger’s success with zero upside. Defend against a business, against a large one that may take away market shares from you, but leave the rest of the community/potential clients alone or work with them. The lesson here is clearly that legal protection should always be reviewed and analyzed rom business and marketing criterias before an action is decided. Because the letter of the law does’nt always match the people’s moral sentiment.
A disappointing action that appears to infringe upon Right to a Free Press – in which the blogger was not selling anything just informing the public and find this action by Goslings deplorable in the name of IP. To me this is a disgrace and will make sure going forward to purchase from other rum companies!