Pusser’s Rum, purveyor of a moderately-priced rum under the same name, has successfully forced the name change of Painkiller, a Lower East Side bar in New York. How? It turns out that Pusser’s secured two trademarks in the name PAINKILLER, one for “alcoholic fruit drinks with fruit juices and cream of coconut and coconut juice,” and one for “non-alcoholic mixed fruit juices.”
So, when the Painkiller bar started operating under the name and, even worse in the eyes of Pusser’s, started offering a drink by the same name without using Pusser’s Rum, Pusser’s sued. In a consent order submitted to the Court, the bar agreed to surrender its website and change its name to PKNY. Not a far leap: P(ain) K(illers) N(ew) Y(ork); but far enough removed to avoid further infringement.
There are interesting twists to this story, though. First, it turns out that Pusser’s did not invent the Painkiller cocktail. The drink is thought to have been invented at the Soggy Dollar Bar in the British Virgin Islands in 1971, a decade before Pusser’s was founded and more than thirty years before Pusser’s filed their trademark applications.
How Pusser’s was able to secure the trademark for a cocktail they did not invent requires an understanding of trademark law. A person or entity is only entitled to trademark protection so long as they continue to use the mark. Furthermore, trademark rights are unique to every country. Thus, if the creator of a trademark ceases to use the name, or is not using it in a certain country, others are free to use the name. This explains how Pusser’s was able to secure trademarks in the United States even though the British Virgin Island-based Soggy Dollar Bar created the drink and name for it.
The second interesting twist is that the notoriety gained by the lawsuit led health inspectors to investigate PKNY (f.k.a Painkiller). The inspection turned up multiple violations, the most alarming of which was the presence of live roaches.
Pusser’s Rum is facing its own problems as well. Their lawsuit over a cocktail they did not invent has caused an uproar in cocktail circles, leading to boycotts and ridicule beyond what it had previously endured for having the name Pusser’s.
Nicholas D. Myers, Esq.
