13:24 GMT // 26 Feb 2013
Trademarking cocktails is a contentious business. Are you trademarking the name, the recipe, or both? Are you breaking the law when you make a drink with the same name but a different product? And who polices this realm of intellectual property?
For all the thousands of cocktails in existence, we believe there are just a handful that are successfully trademarked today. They include the Dark 'N Stormy (note the single apostrophe - more on this later), the Painkiller, the Sazerac and the Hand Grenade.
The Dark 'N Stormy is owned by Gosling's rum and refers to a drink made with Gosling's Black Seal Rum, ginger beer and lime. The Painkiller is owned by Pusser's Rum (Pusser's rum, pineapple juice, cream of coconut, orange juice and fresh nutmeg); the Sazerac by Sazerac Company (Sazerac Rye Whiskey, Peychaud's Bitters, sugar and Herbsaint); and the Hand Grenade by New Orleans bar group 721 Bourbon (a secret recipe that combines a mix of spirits with melon liqueur - if you've been to Bourbon Street you've probably seen a few of these bad boys).
The crucial detail about trademarking cocktails is that it is the name of the drink that is protected under law, not its ingredients. You can mix as many brands of dark rum as you like with ginger beer and lime, but if you insist on still calling it a Dark 'N Stormy, and you haven't used Black Seal, you are in breach of trademark. Naughty!
That's not the only criteria that should be considered by budding trademark enthusiasts. A cocktail name cannot be merely descriptive of ingredients, so you'd be laughed out of court if you attempted to register the humble Vodka Soda, for example.
Nor can you register a cocktail name as a place where you'd expect to be served a drink. A Soho Soda as a name for a Vodka Soda most likely wouldn't fly. "But a Ben Nevis Soda might be OK - after all, who expects to be served a Vodka Soda on top of a Scottish mountain?" says Joanna Frears, Head of Intellectual Property for licensing legal experts Jeffrey Green Russell.
The fact that there are so few trademarked cocktails is a sign of how complicated and convoluted this sphere of intellectual property is, and suggests that the process is not worth the time - or is considered unenforceable - by even the wealthiest of drinks companies.
There has to be a good reason to trademark something - whether it's tradition or something else unique. In the case of Gosling's, its trademark builds on the millions of dollars it has spent in promoting and advertising the Dark 'N Stormy serve, and the objective that other rum companies do not benefit from its investment.
Gosling's first trademarked the Dark 'N Stormy in the late 1970s. Over the decades it had unofficially become the national drink of Bermuda, and was always traditionally made with Gosling's Black Seal. But when other rum companies began promoting the serve abroad, in North America and Western Europe, Bermuda's oldest company (Gosling's had operated there since 1806) sought to protect its commercial interests and moved to register the name.
"We started trademarking the name in Bermuda at first, and then we went global," says Gosling's CEO E. Malcolm Gosling, "but it was a slow build and the budget was tiny." Without the financial backing of a global drinks company, Gosling's went for the obvious places: most Western European countries, the Caribbean, America and Asia.
Its example reveals a further, elemental fact about trademarks: they are valid only in particular geographies. (In what Gosling's now describes as an "administrative faux pas" it missed Australia, and the Dark 'N Stormy name there is now owned by local rum producer Bunderburg.) And that fact makes the process of trademarking an extremely bureaucratic, logistical and legal nightmare most companies would not want to stomach. (For the record, the relevant authorities are the United States Patent and Trademark Office for America and The Intellectual Property Office in the UK. The European Union usefully has a community trademark that can be applied to all member states - the caveat being if a name fails in one state then it fails in them all.)
Nor is establishing a trademark a one-time event. Instead, trademarks must be both demonstrably protected by their owners, taking timely action against those that infringe them, and must be continuously renewed according to the legal framework of the countries they are registered in, with ten years being a typical length of validity. Staying up to date on both fronts comes with predictably hefty legal costs.
At risk is the potential for a trademark to become an everyday descriptive phrase and therefore legally unenforceable. Joanne cites famous examples - including hoover, the aspirin and escalator - that show the consequences of ignoring this. These terms have become generic.
But how to police the cocktail world? What about a bar that's got a Dark 'N Stormy on the menu, only not with Gosling's? Here, the company doesn't send in an army of lawyers but focuses on talking and education to correct an error that's typically been born from ignorance, not malice. "Trademarking the name confused people that we're trying to control mixing rum and ginger beer," says Malcolm. "We're not doing that. Only when you call it a Dark 'N Stormy."
The gloves come off if a rival company stands to gain commercially, particularly if advertising and active promotion of its own Dark 'N Stormy is on the agenda. "We defend our brand very harshly," says Malcolm. Gosling's had a public spat in 2009 with Zaya Rum over its promotion of a Dark And Stormy Cocktail. (Zaya continues to promote the serve on its website - our attempts to contact Zaya were unsuccessful).
And it's not enough just to vary the name, says Joanne Frears. Some bars have previously changed the punctuation of certain cocktail names and claimed it was a different drink. "Don't even think about it," says Joanne. "The test for this is confusion in the market place - just because a punctuation mark has shifted it doesn't make the trademark redundant."
Rather than risk a lawsuit, the simple solution for bars is to sufficiently tweak a cocktail to make it noticeably different to anything existing - or to create a truly original drink - and accompany that with a completely new name for their concoction.
Similarly, Pusser's assertively protected its Painkiller name, which it trademarked in the US and the UK in 2003, when it controversially forced a bar to change its name in 2010. Lower East Side tiki bar Painkiller was forced to rename itself - and relinquish its accompanying web domain - as PKNY following a cease and desist notice and a lawsuit. Crucially, Pusser's had registered the Painkiller name not only under one trademark category - 'alcoholic beverages' - but as many as possible, including 'restaurant and bar services'.
With the benefit of hindsight, would Gosling's Malcolm commit to the time and expense that trademarking the Dark 'N Stormy has cost the company? His answer is rather more emphatic than the usual fence-sitting answer of 'yes and no' and provides useful guidance to other companies considering such a move. "Would I do it again? Yes ...and absolutely not. Yes, because when we first started to export our dark rum it was a worthwhile tool to allow us to offer something unique. And absolutely not: a trademark takes a huge financial investment to protect it."
Fact is, most cocktails survive without being trademarked, with brand owners happy to rely on the power of their brand ambassadors, repetition of published cocktail recipes and word-of-mouth to establish convention around making mixed drinks. Bacardi, for example, has not trademarked the Cuba Libre, even though it ceaselessly promotes its rum as a pre-requisite in the drink. Nor is the Bacardi Cocktail trademarked - protected instead under 'passing off' law.
As for the Hand Grenade, we're not aware of anyone attempting to pass their own version off as the real thing...
• It's the name, not the recipe that's trademarked - think of it as a brand
• You can make a rum, ginger beer and lime and call it whatever you decide - ingredients aren't trademarked
• If you make a rum, ginger beer and lime that's not using Gosling's Black Seal and still call it a Dark 'N Stormy, then you are technically in breach. Same goes for Painkiller, Sazerac and Hand Grenade etc.
• Trademark infringement can be fought in court
• Does this infringe a bartender's creativity? Not really, see above - think up a twist and a new name and you're in the clear