Painkiller, Pusser's Rum and a Tiki Bar

Anyone following the happenings of the tiki bar in NY formally known as Painkiller who is know known as PKNY because Pusser's Rum sued them over the use of Painkiller to preserve their trademark?

I wrote a blog post about it with my take on the matter: http://blog.tikigeeki.com/2011/06/business-of-cocktails-such-pain.html

Thing that annoys me is the Painkiller was created a decade before Pusser's was even created, yet they were able to acquire the trademark for the Painkiller and force a bar to change their name and bully them to try to get them to use their rum because they gained the legal right to the Painkiller in the 1990s. That just seems wrong and an abuse of the trademark and patent system.

Kind of pissed at Pusser's for trying to profit from a tiki cocktail when they were not involved in its original creation, yet using it to their advantage as a business.

Thoughts?

It has been (a little bit) discussed at the Painkiller thread http://www.tikicentral.com/viewtopic.php?topic=35645&forum=2

Oh good! I was amazed to not find anyone talking about it! :wink:

It's a complicated topic with many different sides. Don vs Vic, Goslings, Bacardi and the Bacardi cocktail... legal issues over cocktails is nothing new. The thing that stands out here for me is a brand that acquired the rights 20 years after it had been created, and created without that brand, then attempts to press legally and force people to use their brand when making a Painkiller. That just seems wrong on so many levels.

Well, I'm certainly not going to subsidizing Pusser's actions. Someone, somewhere, called this a pyrrhic victory for Pusser's and I think that's right.

Gary Regan and others are calling for no backlash against Pusser's but, rather, increased support for PKNY. Which is nice, but not exactly, y'know, practical for those of us living in Florida (or Arizona, or Illinois, or Australia, or...) and so, to show my displeasure in the Adam Smith-approved way, I have decided to forego purchasing Pusser's and strongly advocate other like-minded folks do likewise.

It's one thing, I think, to trademark a cocktail with your brand name on it (i.e. "The Bacardi Cocktail") and quite another to become a squatter and then to defend the squatting. Is it legal? It seems to be. Is it right? I don't think it is, but others may disagree. (Fine, whatever.) The more relevant question should be "Is it a net plus, a sound business decision at the end of it all?" The answer, as I think Pusser's will discover to its great cost is likely to be "no."

By their own admission, they move +/-30K cases of rum. That's not a lot of wiggle room. Pusser's appeals (or seeks to) serious cocktailians. (That Painkiller in a can? Not a good idea, Pusser's. That's like a Ferrari moped.) Those people know there are other options out there and are likeliest to be outraged by these developments. The rest of the world will happily go on drinking Bacardi. So if you don't move a ton of product AND you only move that product among a certain niche of the population, angering that niche (or a significant portion thereof) is not the brightest business move.

As far as I can tell, Pusser's is in damage-control mode, and failing. The statement issued by founder Charles Tobias struck me as a bit dismissive and condescending (i.e. "if you don't like the law, change it") and not likely to win the hearts and minds of that very same niche upon which Pusser's sales are so dependent.

Moral of the story?

Just because you can, legally, do something doesn't make it correct or, perhaps more importantly, a wise business decision.

BWAHAHAHA!! Pusser's violates Gosling's trademark: http://bit.ly/k8TfFH

Jokeiii, you can only see that link if you follow them on Twitter, can you copy and paste it here?
Thanks

I don't follow them on Twitter, but I can see it...

http://twitter.com/pussers_bvi/statuses/13553239965?_escaped_fragment_=/pussers_bvi/status/13553239965#!/pussers_bvi/status/13553239965

BIG PANIC!!!!!1! BUY BATTERIES!!!

[ Edited by: phinz 2011-06-15 16:46 ]

*"Media not displayed.

This Tweet is from someone you're not following. The media they're mentioning could be anything, even something you might find offensive." * :(

All I get is a link to a guy making a Dark & Story with Pusser's

All I get is a link to a guy making a Dark & Story with Pusser's

Gosling's trademarked the drink "dark 'n' stormy" so far they haven't sued any bars named dark & stormy or the estate of charles schultz.

[ Edited by: exquisitecorpse 2011-06-15 17:20 ]

MDM,

Pusser's Twitter feed featured a violation of Gosling's trademark for the Dark 'N Stormy, a video of someone making the DNS with Pusser's and (ooops!) not Gosling's.

"@pussers_bvi tweeted:
How to make a dark and stormy!
http://www.youtube.com/watch?v=H80IJXykTZ8"

I GET IT NOW! I didn't understand how Acaciavet was tied to Pusser's? It was posted by Pusser's on their Twitter page :blush: :lol:

'zackly.

As Bugs Bunny would say, "What a maroon."

From my understanding, any drink made using a rum other than Goslings must be called a Dark AND Stormy. Goslings have the trademark for a Dark 'N' Stormy.

As for the Pussers issue, there are a couple of pages on Facebook about it.

http://www.facebook.com/pages/Bartenders-and-Cocktailians-against-Pussers-Rum/120847664666715

http://www.facebook.com/pages/100000-Bartenders-Who-Wont-Buy-Pussers-Rum-Again/110098632412979

If Pusser's is going for an all encompassing image of trademark protection, are they now going to sue DreamCatcher Interactive for having released a game in 2004 called "Painkiller"? They have already established an unreasonable legal claim on the name, I'm just curious on how far they are willing to push it.

No, they are only protecting thier name in the areas they have trademarked it, so you can happily call almost anything else "Painkiller" as long as it is not within the drinks industry.
Like everything, there are two sides to every story. Pussers did the right thing in trying to protect thier copyright, but, could have done it in a less heavy handed way, hell, they could have played the whole thing to their advantage. PKNY stood up to keepiing thier name but could have been a little more understanding and played the whole thing to their advantage.
Trademarks are expensive to buy, and if you do not enforce them it makes them harder to protect.

On 2011-06-15 21:31, swizzle wrote:
From my understanding, any drink made using a rum other than Goslings must be called a Dark AND Stormy. Goslings have the trademark for a Dark 'N' Stormy.

My IP attorney says "no," alas. Any variation of "'N" ("and,""&," etc.) would still not be sufficient.

On 2011-06-16 00:56, cheekytiki wrote:
No, they are only protecting thier name in the areas they have trademarked it, so you can happily call almost anything else "Painkiller" as long as it is not within the drinks industry.
Like everything, there are two sides to every story. Pussers did the right thing in trying to protect thier copyright, but, could have done it in a less heavy handed way, hell, they could have played the whole thing to their advantage. PKNY stood up to keepiing thier name but could have been a little more understanding and played the whole thing to their advantage.
Trademarks are expensive to buy, and if you do not enforce them it makes them harder to protect.

Two things: Pusser's TMed the name for a restaurant/bar/etc. AFTER the PKNY opened its doors. (They should have have TMed the name for use with a bar/restaurant first.) Also I read -- this may very well be wrong -- that Pusser's TMed the drink name as "Pusser's Painkiller" and not as a plain ol' "Painkiller."

Finally, I really don't care about how much, legally, in the right Pusser's is. It doesn't matter to me they didn't break the law; what matters to me is that, from what I can see, they abused the legal loopholes that allowed them to trademark a drink they didn't invent, ten years after it was invented, and invented with rums not theirs. I think that had it gone to trial, Pusser's may well have lost. But I am 99.99999999% certain PKNY simply didn't have the dollars to take this to trial. In my professional life I have seen so many instances of a larger company placing a smaller company in the "You can't afford to fight us, even if you're right" position.

Does Pusser's have a right to pursue all legal remedies to protect their trademark? Yes. Do I have the legal right to refrain from ever purchasing anything of Pusser's ever again, and strenuously seeking to convince as many other people to do likewise? Mm-hmm.

So, no Pusser's for me from here on out.

I have no issue with Pussers. They trademarked their name legally and have a legal right to enforce and pursue trademark infringements. PKNY, a cool place from what I hear, chose to either 1. to infringe on this knowingly or 2. to not respond when they were made aware of the infringement and requests to resolve the issue were made by Pussers. As a New Yorker I completely understand the attitude of "what? I didn't intend to infringe on your rights but now I've got a business, so let's see if you can make me back down", PKNY just was in the wrong and had to back down in the end.

I don't see any reason to get too upset about this. PKNY is still in business and probably will get a boost in exposure because of this. Folks who know and patronize Painkiller regularly are the ones following the story and won't be confused by the name change. Pussers is still in business and this won't affect their bottom line much.

The Painkiller was originally invented at the Soggy Dollar Bar, and was later trademarked by Charles Tobias and marketed. In the Caribbean, the Soggy and Charles/Pussers still get along just fine. There is plenty of room in this for everything to work out up here too.

dcman

On 2011-06-16 07:16, dcman wrote:

[snip]PKNY, a cool place from what I hear, chose to either 1. to infringe on this knowingly or 2. to not respond when they were made aware of the infringement and requests to resolve the issue were made by Pussers.[/snip]

A third option -- and one I consider likeliest -- is that PKNY's proposals to resolve the issue were unsatisfactory to Pusser's. The latter, let's face it, by virtue of size and resources at their command, were in a position to dictate. I'm not convinced that (admittedly this is hypothetical) had this gone to trial, it would have been a slam-dunk for Pusser's. But Pusser's is able to marshal legal firepower to an extent PKNY cannot.

To me the question "Is what Pusser's did legal?" sets the bar too low. Of course what they did is legal, and perfectly permissible. I don't think anyone is arguing that. My opinion is that meeting the standard of legality is insufficient for me to look favorably on Pusser's...which is now in a serious PR nightmare similar to Rep. Weiner's, of getting caught flatfooted and compounding the problem by responding in what many perceive as an arrogant fashion.

So, still no Pusser's for me.

A little while back I wrote a blog post about Pusser's and PKNY. Charles Tobias, owner of Pusser's, just wrote me a response and posted it on their site: http://www.pussers.com/joby.htm Here's my original post to keep things in context: http://blog.tikigeeki.com/2011/06/business-of-cocktails-such-pain.html Thought others would like to hear more of Pusser's take on it all... it's been a very interesting discussion.

Pass on Pussers

I'm thinking of having a button made.

Bear

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

On 2011-08-03 14:28, tsenator wrote:
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

Nice advert for Pussers there tsenator, do you work for the company, or are you really Charles Tobias?

I didn't really have an opinion on the issue when I first heard about it, legal issues are like that, the law is what it is.

But then after I was prompted to read Charles Tobias' responses to both the original displeasure to the verdict and then to Joby's blog post, and I realized his arrogance and his condescending manner toward those who might have an issue with the way it all went down, I changed my position.

That arrogance and condescension, behaving in a manner akin to a parent saying very loudly that they had spoken the last word on the matter and for all of us little children to go to our rooms, drove me away from the company and into the other camp. And before you start claiming that his responses aren't like that, you're wrong, that's exactly the vibe they give off. Go re-read them.

He had a small public relations problem, so he threw gasoline on it with his original response, now he has a major public relations problem, and so he throws more gasoline. I believe that Charles Tobias is quite annoyed and angered that people aren't just shutting up and dropping the issue, he's spoken the last word after all, why haven't they been won over? It's because he's alienating people, like me, who might not have been against him in the first place. The man is too stupid for words, he deserves his company going down in flames of his own making.

I don't care how much cash he spends flogging his product, I will continue to Pass On Pussers! Not one cent of mine to the arrogant ass.

Bear

I'd say the average American bar-going consumer has never heard of the specific "painkiller" cocktail, much less associated one with a particular brand of rum.

In fact, I'd bet that to the average American drinker, the word "painkiller" is generic for alcoholic drinks generally.

Had that bar taken the matter to trial, I suspect they could have prevailed by showing that there is NO likelihood of confusion in the pertinent marketplace (likelihood of confusion being the touchstone of an infringement claim), and perhaps even had the trademark invalidated for being generic.

I don't think any "longtime Sailor" uses the word "cherish" :lol:

On 2011-08-04 08:25, Rum Balls wrote:
I don't think any "longtime Sailor" uses the word "cherish" :lol:

Only slurred...

"I don't want no godamnded cherish in my drinkshh...."

Been watching this thread, and percolating my thoughts for a while.
Oh, boy! First, let me strap on my helmet and Kevlar vest, then here goes...

First off, regarding the 'David vs. Goliath' characterization, I think some may be overestimating the "overwhelming resources" of Pusser's to litigate. Pusser's is not Bacardi. Or even Cruzan. Hell, within the industry, it's practically a micro-distiller!

Anyway, my first reaction to this imbroglio, was, Why didn't they simply trademark "Pusser's Painkiller"? Then I did a little research, and in fact, they did, initially. But then they abandoned that, and trademarked plain old "Painkiller". After giving it some thought, I fully agree with that move.

Imagine if their trademark was for "Pusser's Painkiller", with plain "Painkiller" still out there for anyone to use. They invest lots of money promoting and popularizing the "Pusser's Painkiller", both as a mix-to-order cocktail and a ready-to-drink (RTD) product, with the goal of eventually recovering all that money, and more (you know, 'profit'). But IF they succeeded, who realistically thinks this newly popular drink would be commonly called the "Pusser's Painkiller"? No, it would be simply known as the "Painkiller'. So, after Pusser's invests lots of money, promoting this drink and bringing it into customer's consciousness, and creating a market for it, Bacardi (for instance) could jump in with the RTD "Bacardi Select Painkiller", or whatever. They'd piggyback Pusser's investment in creating the market, then crush Pusser's with their superior distribution and resources. Pusser's would never make back what they put into it. So, the trademark had to be for just "Painkiller", to keep from having their investment hijacked.

Now, I know most of us (myself included) feel contempt for RTD cocktails. Fine, we don't buy them. But I won't fault any distiller for pursuing that growing market. And if you're going to pour your own, or investor's, money into a new RTD product line, you'd better protect the name of that product. I'm sure the whole deal with the bar was at the advice of their attorneys, with the goal of preserving their trademark, and the value of their investment. I haven't heard PKNY's account - I wish we could. But I just doubt that Pusser's was gratuitously 'bullying' them. Pusser's did not make money from protecting their trademark - their attorney's did. It cost Pusser's - money, and a little negative PR - but they clearly judged it necessary, in order to protect what they'd already invested in the 'Painkiller' venture.

Look, I don't think Pusser's would care if 'Joe's Neighborhood Bar' offered a drink named "Painkiller", made with Myers's (or Jack Daniels, even). I don't think Pusser's would worry about a bar named "The Painkiller Lounge" in West Podunk, Wyoming, Pop. 10,000. Neither would have much impact, in a case arguing that Pusser's had substantially failed to defend their trademark. But, c'mon - a bar in Manhattan? Named "Painkiller"? That serves a namesake rum drink NOT made with Pusser's Rum? And that could be arguably considered "nationally known"? Tobias may have preferred not to get into a dispute with a popular drinking establishment, but he was truly "between a rock and a hard place". Say Pusser's let it slide. Then Bacardi hijacks their product with "Bacardi Painkiller - ask your bartender, or buy it in a can". Pusser's sues them. Bacardi - who can really afford to litigate - responds, 'But there's a nationally known bar, actually named "Painkiller", which features a drink by that name. And Pusser's tolerated this highly prominent use of "Painkiller" as the name of a club, named after their featured drink, which was NOT made with Pusser's rum. So we - or anyone else - should also be allowed to market a "Painkiller", made with our own formula and rum.' Bacardi would have a good case, don't you think?

As far as the rum, itself, I really like Pusser's, but I don't drink much of it. It's pricey, and so I eschew drinking it, so I'll "have it on hand" in my bar. If it was $6 or $7 less, I'd probably buy a case a year, instead of a bottle every few years. So, while I won't be boycotting, they'd never notice, if I did.

[ Edited by: Limbo Lizard 2011-08-04 13:53 ]

I've actually done a 180 on this issue. My first instinct was the same as many of you - a fat cat liquor company bashing a small business owner with a lawsuit. But having read the letter from Pusser's, and thinking about it a bit more, I'm understanding Pusser's side much more. Look, someone opened a bar and could have named it anything - Manhattan Rum Bar, Tiki Killer, Rumble in the Urban Jungle, etc etc etc. Heck, if they'd named it New York Painkiller they probably would have been OK. But they chose to name it after a fairly well-known cocktail, and one that was trademarked. Doing a trademark search is the smart thing to do whenever starting a business. If they didn't do the research, well then lesson learned. If they did know of the trademark and decided to do it anyway, then they gambled and lost. On a side note, PKNY is a pretty lame alternative name, but hopefully Donna Karan won't come after them.

I say anyone with enough money to spend on legal fees can easily defeat Pusser's registration of "painkiller" as a mark.

This whole thing reminds me of how Disney filed a trademark application for "SEAL Team 6" after Bin Laden was killed. Disney withdrew it and handed it over to the Navy after they got pilloried for what they were doing.

On 2011-08-03 14:28, tsenator wrote:
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

Aaaaaaaah, so you are the one with this response on TikiGeeki's blog. Here is my response to your posting as is on TG's blog.

"This idea that no one ever hears of a drink unless it is tirelessly promoted by some profit minded company is an incredibly presumptuous pothole of rationalizing. Incredulous is too tepid a word to express my open jawwed reaction to your pomposity with this "weaker than a Pusser's painkiller" argument.

Which distillery has trademarked the Jet Pilot? Which company has proprietary ownership of a zombie? Dead Bastard? Suffering Bastard? Fog Cutter? When is Pusser's going to own the rights to a Navy Grog? After all, they are the creator and promoter of all maritime related cocktails, n'est pas? Without their tireless global marketing, we would never know of these things in this miasmatic jungle known as the United States. Correct? I think you have the scurvy, sailor boy!"

BTW - your argument still dances around TG's essential point...that is, Pusser's may have promoted the Painkiller (just like Appleton Estate promotes a mai tai, ala National mai tai day), but given history, neither distillery invented either drink. This reality precedes the point you tried to argue within your post.

With that said, Charles Tobias DOES respond to this central and key point. I admire his response to TikiGeeki's blog. So, who has the proper historic perspective?

I have always respected Beachbum Berry's depth of knowledge on the history of all cocktails (having sat in one of this cocktail lectures and listened to him reverently give the history of many cocktails). So, with no disrespect to Mr. Tobias, I have to place my trust in someone who passionately follows this for his livelihood. Ergo, I continue to vehemently believe that Beachbum Berry is spot on with his statement that George Myrick created the drink. Hell, Beachbum Berry even cited the original recipe.

I am not saying that Tobias knows this and is just denying the truth in his defense of Daphne Henderson creating this drink, but (again) Beachbum Berry researches these things for a living. Mr. Tobias says he spoke to people who never recall the drink being served in George Myrick's days. I believe (conversely) Beachbum Berry spoke to people to validate the history that he has promoted -- his reputation depends upon his accuracy as a noted cocktail historian.

[ Edited by: Vince Martini 2011-08-13 11:12 ]

Nice advert for Pussers there tsenator, do you work for the company, or are you really Charles Tobias?
a
'....... Bear

Ummm No you belligerent jack pole - I am a old sailor and have sailed the BVI and drank at the "Soggy dollar" and Pussers YEARS before you probably ever even HEARD of the damn drink

Don't believe me - I don't care - but ask ANY sailor thats sailed one of the greatest sailing Charter locations in the western hemisphere (the BVI's) and when you say Painkillers they automatically think "Pussers".

Stuff that in your crack pipe

Vince Martini

BTW - your argument still dances around TG's essential point...that is, Pusser's may have promoted the Painkiller (just like Appleton Estate promotes a mai tai, ala National mai tai day), but given history, neither distillery invented either drink.

yes BUT EVERYONE HERE IS THICK !! - EVEN THE DAMN BAR THAT INVENTED THE PAINKILLER (SOGGY DOLLAR) GIVES CREDIT TO PUSSER's FOR THE PAINKILLER _ HERE IS A PICTURE I TOOK YEARS AGO AT THAT SOGGY DOLLAR !!!!

DUHHH....

lighten up, Francis.

On 2011-08-16 20:47, thePorpoise wrote:
lighten up, Francis.

BRB, gonna make tsenator a drink. :D

Well, I guess we can tie a bow on all this, now... Here's a cross-link to the announcement that PKNY is closing in July, 2013, because the landlord doesn't want to renew their lease.
http://www.tikicentral.com/viewtopic.php?topic=45563&forum=1&15