Tuesday, July 07, 2009

Dark & Stormy trademark claims

NYT story about a registered trademark for a cocktail made with a particular brand of rum (HT: Jeremy Sheff). As a review question, check the article for conformity with actual trademark law. Or wonder whether the registrant is engaged in naked licensing by giving everyone the recipe for Dark & Stormy cocktails, to be assembled by the bartender.

5 comments:

Mark said...

Before we even get to the naked licensing issue - is this even a valid trademark? The claim seems to be that "Dark 'n Stormy" is a mark because the drink is made with certain ingredients, at least one of which is a branded ingredient. Under that theory, Jack & Coke is a trademark (query whether a mark of Jack Daniels or Coca-Cola) because it can only be made with Jack Daniels and Coca-Cola. And in fact making it with other types of soda or liquor would be an infringement. Weird.

Rebecca Tushnet said...

I agree--there's a significant question of validity, at least as to the drink itself, though it's possible that ancillary goods could be actually sourced from the registrant.

Guy said...

As to the naked licensing issue--I'm not sure merely giving the recipe constitutes naked licensing; but I think this raises questions of how one would even "license" such a drink, especially considering it doesn't seem like the mark owner actually produces the drink for sale on the shelves.

If a naked licensing issue is at stake, the trademark owner faces the problem of enforcement. How many bars are there in the United States (way too many to count)? Given the wide use of the mark, how would the TM owner craft a lawsuit--would it "make an example of someone"?

Also, it seems to me that "use" here by bartenders raises questions of genericide and free speech (e.g., validity questions).

Bob Cumbow said...

If what they want is not to protect their OWN exclusive right to use the mark for a type of cocktail, but rather to make sure that OTHERS use the mark only with cocktails conforming to a certain standard, they should have registered a certification mark. ... And have they given any thought to how they are going to enforce this?

Mark said...

Bob - have you ever heard of a certification mark where the condition certified was use of a branded ingredient? It seems like a novel claim to me