Gosling's Rum Forgoes Free Promotion Of Famous Cocktail In Favor Of Trademark

from the rummy dept

Mon, Sep 28th 2015 11:13pm — Timothy Geigner

It's a common refrain whenever we discuss trademark disputes that appear to be barely-necessary, if necessary at all: companies must protect their trademarks. That's not actually true, of course. What a company must do, actually, assuming it wants to be good at company-ing, is it must maximize its revenue, profits, and exposure and be as successful as it can be. If that means protecting its trademark interests in a valid way, so be it. But that isn't always necessarily the case.

Take the recent news about Gosling's Rum and its apparent attempt to enforce its questionable trademark over the drink-name "Dark n' Stormy." Now, I've known about dark and stormies for quite some time, having honeymooned in the Caribbean and having some close friends that are Cuban. Based on my prior knowledge, a dark and stormy is a cocktail of ginger beer mixed with black rum. It's absolutely delicious, by the way. Turns out, a true dark and stormy is made with Gosling rum, as the originator of the term were Royal Naval officers in Bermuda experimenting with Gosling Black Rum in the mid-1800s.

By 1850 Gosling’s Black Seal was a hot commodity. The liquor piqued the interest of nearby Royal Naval Officers, who tried putting it in the ginger beer they’d been brewing, to help with seasickness. The combination was delicious. The dark coloring, not quite as appealing, lead a sailor to famously remark that it was: “the color of a cloud only a fool or a dead man would sail under.” The Dark n’ Stormy was born.

What sounds like a legend has actually been well enough proven that the validation of the story factored into Gosling having a trademark approved on the term "Dark 'n Stormy." Now, I find it questionable that the name of a cocktail, particularly one with at least something of a descriptive nature, ought to deserve trademark protection. There's something different between "Dark 'n Stormy" and "Black and Tan", but is it enough difference to warrant a trademark when the latter doesn't get one? There's a reason cocktail names rarely get trademark protection. As my anecdote above demonstrates, cocktail mixers frequently substitute alcohol labels when making drinks. A rum and coke might be made with any number of rums.

But even if we put the validity of the mark aside for a moment, is the best business decision for Gosling really to go legal on anyone else who dares use the term "dark 'n stormy?"

In an 18-page complaint filed to federal court, E. Malcolm Gosling Jr. and his brother allege that the liquor conglomerate Pernod Ricard has committed federal trademark infringement. Their case stems from a recipe Pernod Ricard posted for a Dark n’ Stormy in 2014 on its website. The drink calls for ginger beer, just like Gosling’s original, but suggests a different main ingredient: Malibu Island Spiced Rum.

The lawsuit claims that Gosling not only invented the cocktail, but is the driving force behind its popularity today. The company owns not one trademark on the name, but five, extending to clothing, kits containing rum and ginger beer, “bar services,” and the premixed version of the drink.

And, yet, even as the complaint goes on to lament on all the time and resources Gosling expends promoting Dark 'n Stormies, nobody could seriously claim that the cocktail is any kind of household name. And Gosling has had decades to promote it. What if Gosling didn't go after this trademark violation? What if, instead, it allowed others to use the Dark 'n Stormy cocktail name? What if, by allowing the use, Gosling lost the exclusive rights to the mark entirely and the cocktail then was free to be promoted and pushed by any number of liquor brands? Or ginger beer brands? Or bars? And what if, after all of that promotion Dark 'n Stormies got without Gosling having to spend a dime or time to generate, what if then it capitalized on the exposure as the authentic rum, the only authentic rum, of a true Dark 'n Stormy? What if by relinquishing the control afforded by trademark, the company was actually positioned to make more money by selling more black rum, being the one true rum of a real Dark 'n Stormy?

Gee, if only we had some example to point to that demonstrated that sometimes forgoing the trademark resulted in a massive popularity boost.

Yes, the hot sauce whose creator when out of his way to not trademark anything is now more popular than nearly every other condiment brand that exists anywhere. Yes, David Tran is entirely too busy leaping into the swimming pool filled with money that my imagination insists that he has to give two damns about trademark law. Revenue trumps control, always. And perhaps if Gosling were willing to loosen its grip it might find itself too busy counting its money to remember why it bothered with this trademark stuff to begin with.

Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community.

Techdirt is one of the few remaining truly independent media outlets. We do not have a giant corporation behind us, and we rely heavily on our community to support us, in an age when advertisers are increasingly uninterested in sponsoring small, independent sites — especially a site like ours that is unwilling to pull punches in its reporting and analysis.

While other websites have resorted to paywalls, registration requirements, and increasingly annoying/intrusive advertising, we have always kept Techdirt open and available to anyone. But in order to continue doing so, we need your support. We offer a variety of ways for our readers to support us, from direct donations to special subscriptions and cool merchandise — and every little bit helps. Thank you.

–The Techdirt Team

Filed Under: advertising, cocktails, dark n' stormy, drinks, marketing, rum, trademark
Companies: gosling, pernod ricard

28 Comments

If you liked this post, you may also be interested in...

Reader Comments

Subscribe: RSS

View by: Time | Thread

orbitalinsertion (profile), 29 Sep 2015 @ 12:35am

Night
The lawsuit claims that Gosling not only invented the cocktail,

This is not exactly congruent with the invention or the naming as shown in the story which somehow got Gosling the trademark originally. It doesn't make sense to me for now or when the mark was issued. Some guys mixed a drink with their rather unique ginger beer, and one made a nautical weather metaphor, therefore I invented this and should own the mark because... my rum. And also, therefore I invented this mix and the name.

Seems more like a case for some former sailors of the Royal Navy to own the mark.

And I guess Bulwer-Lytton (oh, retroactively, aside from posthumously)and a host of amused fair-users such as Charles Schultz (also posthumously) are in so much trouble.
[ link to this | view in thread ]
David, 29 Sep 2015 @ 1:00am

That brings back memories
Gosling may be the most infamous name in copyright history after Mickey Mouse.

James Gosling screwing Stallman over by taking his work and creating a proprietarily licensed "Gosling Emacs" from it was what prompted Stallman to write the GPL, rewrite Emacs from scratch and release it as GNU Emacs under the GPL.
[ link to this | view in thread ]
Anonymous Coward, 29 Sep 2015 @ 3:59am

Re: Night
My thoughts exactly. How do they get to trademark a name they didn't create? Also, when was the trademark filed, many years after the name was coined? If so, then it should not have been granted.
[ link to this | view in thread ]
Bamboo Harvester (profile), 29 Sep 2015 @ 4:21am

Further hearsay evidence....
... a shot rang out.

The maid screamed....
[ link to this | view in thread ]
cpt kangarooski, 29 Sep 2015 @ 5:45am

Re: Re: Night
Trademarks aren't like copyrights or patents. There is no requirement that the trademark holder have originated the mark or that the mark is novel or even of recent vintage. Since they're just meant to let customers distinguish amongst goods and services, why would originality or novelty matter? All that matters is using it in commerce as a mark the strength of the mark itself, and lack of confusion in the market.

A great example is the PERSONS case, in which a mark was in use for a clothing line in Japan, an American businessman saw it and directly copied it in the US (where the Japanese firm did no business), and the courts ultimately decided that the American had superior rights to the mark in the US because it wasn't being used here when it was copied. https://law.resource.org/pub/us/case/reporter/F2/900/900.F2d.1565.89-1370.html
[ link to this | view in thread ]
Ninja (profile), 29 Sep 2015 @ 5:57am

Grammar nazi
Yes, the hot sauce whose creator when out of his way

I think something when wrong went you wrote it.
[ link to this | view in thread ]
Anonymous Coward, 29 Sep 2015 @ 6:49am

SO if Gosling has a trademark so do all Ginger Beer makers , you can't have one without the other ..right.
[ link to this | view in thread ]
Spaceman Spiff (profile), 29 Sep 2015 @ 7:22am

Lawyers!
This is why we first shoot all the lawyers... :-)
[ link to this | view in thread ]
Lord Binky, 29 Sep 2015 @ 7:22am

Return to the near forgotten history from which you came!
Let us all laugh as we move on from term Dark n' Stormy to a more modern title that does not impose upon our liberty!

Please allow me to start us off with a few suggestions:
Stygian Gale
Inky Tempest
Murky Flurry
Dusky Squally (or Shady Squally for fellow fans of alliteration)
[ link to this | view in thread ]
bureau13 (profile), 29 Sep 2015 @ 7:42am

Re: Re: Re: Night
But Gosling isn't selling "Dark n Stormies," they're selling rum. How could anyone else who is using that cause marketplace confusion? Unless Gosling is selling these pre-mixed, I don't see it.
[ link to this | view in thread ]
nasch (profile), 29 Sep 2015 @ 8:32am

Re: Re: Re: Re: Night
Unless Gosling is selling these pre-mixed, I don't see it.

"The company owns not one trademark on the name, but five, extending to clothing, kits containing rum and ginger beer, “bar services,” and the premixed version of the drink."
[ link to this | view in thread ]
z! (profile), 29 Sep 2015 @ 8:57am

Wait, what do you mean "Dark 'n Stormy" isn't a household name? It is in most houses I know, and would be with any competent bartender.

Anyway, mixing ginger beer with anything but a very dark rum might make something drinkable, but it won't be a Dark 'n Stormy, just as a Martini has only gin and vermouth.
[ link to this | view in thread ]
Anonymous Coward, 29 Sep 2015 @ 9:10am

Re: Re: Re: Night
...let customers distinguish amongst goods and services...lack of confusion in the market...

While I'm not one to get easily confused others might, and trademarks - or lack thereof - doesn't always help. I remember my father encountering in his travels Fry's Electronics and Fry's Food Stores; he thought they were the same company - they're not. I've seen Reddit posts thinking that KwikTrip and QuikTrip are the same company; they're not. And there are no less than eight different companies in my area that use the tag line "One Call Does It All" on their advertising.
[ link to this | view in thread ]
Josh (profile), 29 Sep 2015 @ 9:18am

Unlike combining rum & ginger beer, yours is a very novel idea
As someone who was threatened with crushing legal action by Gosling's attorneys over a blog post discussing the combination of rum and ginger beer, I wholeheartedly endorse this notion. Background here: http://inuakena.com/2012/09/14/cease-and-desist
[ link to this | view in thread ]
Anonymous Coward, 29 Sep 2015 @ 9:49am

I make drinks with rum and ginger beer and call them Dark 'n' Stormy. Sue me.
[ link to this | view in thread ]
nasch (profile), 29 Sep 2015 @ 9:58am

Re: Re: Re: Re: Night
I discovered there were two different unrelated sandwich shops in my town called Pauly's Subs. That was a surprise.
[ link to this | view in thread ]
Anonymous Coward, 29 Sep 2015 @ 10:03am

Re: Re: Night
I think the issue here is that it isn't Gosling that is attempting to protect the mark at all costs; it's Gosling's Lawyers. THEY have everything to lose, as they have a full-time job protecting the mark, and all those billable hours go up in smoke if they lose control of the name and Gosling gets free advertising instead. The marketing department might also be concerned if someone else gets to do their marketing for them, and does a better job than they have.
[ link to this | view in thread ]
nasch (profile), 29 Sep 2015 @ 10:46am

Re: Re: Re: Night
I think the issue here is that it isn't Gosling that is attempting to protect the mark at all costs; it's Gosling's Lawyers. THEY have everything to lose, as they have a full-time job protecting the mark,

Are they using in-house lawyers or hiring an outside firm? If the latter, which I think is more common, then they have no job security concerns with regard to this trademark. There's always another client.
[ link to this | view in thread ]
Josh (profile), 29 Sep 2015 @ 10:54am

Re: Re: Re: Re: Night
It's an outside firm: Abelman, Frayne & Schwab at 666 3rd Avenue in New York City. Note the Satanic address.
[ link to this | view in thread ]
Anonymous Coward, 29 Sep 2015 @ 12:27pm

Well, I must be ignorant. I don't recognize the name "Gosling", but I certainly recognize "Bacardi". Likewise, I don't recognize "Dark n' Stormy" (which I thought was the lead line in a cheezy novel), but I certainly recognize "Run and Coke". This whole thing sounds like a tempest in a teapot, with Gorham and Revere arguing over who gets to supply the teapot. Popcorn, anyone?
[ link to this | view in thread ]
Anonymous Coward, 29 Sep 2015 @ 12:30pm

Sorry, "Rum and Coke". Can't spell, either.
[ link to this | view in thread ]
Anonymous Coward, 29 Sep 2015 @ 3:25pm

A Gosling is a baby goose, no pun intended. Put two men on the payroll, with names like Joe Dark and Jim Stormy, put their pictures on the label, and let the chips fall where thy may. This is so ludicrous it would be funny, except that time and resources are being wasted on it.
[ link to this | view in thread ]
orbitalinsertion (profile), 29 Sep 2015 @ 3:42pm

Re: Re: Re: Re: Re: Night
Or Quicken and Quicken.

And then you might think actors with the same surname might be related or something, since that is a common thing. Quelle horreur.

I always wonder what the upshot of some of the confusion is, unless someone is actively marketing a fake version of something as the original or really, really attempting to ride the coattails original product or service. Maybe their complaints departments get calls about crap that has nothing to do with them?
[ link to this | view in thread ]
orbitalinsertion (profile), 29 Sep 2015 @ 3:44pm

Re: Re: Re: Night
Lawyers effectively run a lot of things such as this. Because they are allowed to do so.
[ link to this | view in thread ]
orbitalinsertion (profile), 29 Sep 2015 @ 3:46pm

Re: That brings back memories
God dammit now I am confused! Rum vs EMACS? What if i want a mixed drink? I don't know where i am anymore. Someone call a trademark lawyer.
[ link to this | view in thread ]
orbitalinsertion (profile), 29 Sep 2015 @ 3:48pm

Re: Return to the near forgotten history from which you came!
Yet everyone is going to want to know, who is the real Squally Shady?
[ link to this | view in thread ]
Lawrence D’Oliveiro, 29 Sep 2015 @ 7:20pm

Did They Predate ...
... Bulwer-Lytton’s use of the phrase, by any chance?
[ link to this | view in thread ]
DeltaBravo, 4 Oct 2015 @ 7:09pm

Premixed Dark N Stormy
They do sell it premixed. And they sell both Gosling's rum and Gosling's ginger beer. I don't have a problem with considering a Dark N Stormy being made from Gosling's and a 'rum and ginger' to be all others. But then I think it's deceptive that Budweiser comes from St. Louis, not Budweis.
[ link to this | view in thread ]