Most interesting part for me? Goslings only owns the mark as regards pre-mixed (ie canned) drinks and t-shirts, etc.

I appreciate your comments on the Patent, Copyright and Trademark, which are all correct. Dark’n Stormy is a trademark belonging to Gosling’s and here in Bermuda we sell a RTD version of the cocktail available in a 12 oz can, as well as cakes, jams and sauces all bearing the Dark’n Stormy name and trademark.

You raise a good point about competition. Competition is great for the consumer and the consumer wants to know what he is getting. By trade-marking our drink we are NOT limiting competition, in fact we encourage it. Ginger Beer is very popular in Bermuda and locals mix all sorts of spirits with it including a variety of other Rums. However if someone orders a Dark’n Stormy they are expecting to get Gosling’s Black Seal Rum and Ginger Beer. Quite simply if it is another Rum and Ginger Beer, Zaya for example it is not a Dark’n Stormy therefore they must come up with another name.

Having not seen the Zaya ad either, you are correct in stating technically they can encourage consumers to try Zaya Rum and Ginger Beer rather than having a Dark’n Stormy, they just can not call their creation a Dark’n Stormy. Perhaps call it the Z-Storm or something like that.

We have had similar issues with Cruzan Rum, another brand that we import to Bermuda. In trademark litigation we never threaten a company it is just simply a cease and desist using the name Dark’n Stormy for your Rum and Ginger beer. Get the creative juices flowing and come up with your own name for Rum and Ginger Beer. Trademarks do not stifle creativity rather encourages it.

The Jamaican Mule is a great alternative if using a Jamaican Rum. Moscow Mule is Smirnoff and Ginger Beer and it was the cocktail that started the vodka revolution in North America. The reason others are trying to use the name is simply they are trying to capitalize on the investment Gosling’s Rum has made on the cocktail and the fact it is a cool name. Prior to Gosling’s marketing the Dark’n Stormy outside of Bermuda, Ginger Beer was relatively unknown in the united states and certainly not considered as a cocktail mixer in recent years.

Dark’n Stormy is not a commodity product, it is an original cocktail creation in Bermuda using Gosling’s Rum and Ginger Beer. When you order a Rum and coke you will get whatever Rum the bartender feels like pouring. That is why Bacardi is training there consumers to call it by name Bacardi and Coke. The bartender would not substitute Rum if the consumer asks for Bacardi and Coke, therefore why should anything but Gosling’s Rum be substituted for the Dark’n Stormy.

If Bacardi could prove that the original Mojito and Daiquiri was indeed made with their Rum then would have a chance at getting the trademarks to those names, however they can not. It is difficult to enforce a trademark; however Gosling’s Rum have been doing it for the past several decades.

99.9% of the time when the consumer is not using Gosling’s Rum in the Dark’n Stormy it is not intentional it is because they do not know any better. Therefore we can not be upset with them, however try to educate them about the history of the cocktail and the fact that we have a trademark for the name. Articles like what appeared in the NYT and the various blogs as a result are a great step in beginning to educate the consumer and industry professionals alike about the Dark’n Stormy.

Bundaberg Rum from Australia also has a trademark. There is a story behind this and in fact Bundaberg has the rights to the name Dark’n Stormy, however only in Australia. Every year in November Bermuda plays host to the World Rugby Classic which sees a team from Australia come to Bermuda every year to compete. The Classic has been in existence since the early 1970’s and it was the players who took Bermuda’s National Drink, the Dark’n Stormy back to Australia where Ginger Beer and Rum was also popular. Therefore Bundaberg trademarked the drink in Australia before Gosling’s Rum did. At the moment Gosling’s Rum is not distributed in Australia therefore it is not an issue. However Bundaberg can not promote the Dark’n Stormy with Bundaberg Rum outside of Australia.

The Dark’n Stormy has encoraged several mixologist/bartenders to be creative. An example is the perfect storm, simply a Dark’n Stormy with the addition of pineapple juice, or one of my favorites is the Gold Mint, which is the Gosling’s Gold Bermuda Rum, Ginger Beer and a drop of Crème de Menthe. So my advice to other Rum producers if you want to jump on the Ginger Beer band wagon you had better get creating and come up with your own name for the cocktail. The Dark’n Stormy is a Bermuda Original and the trademark offices agree.

It all depends on whether the ad encourages bartenders to do this with or without telling the customer. If the ad encourages them to do this without telling the customer, then trademark law needs to step in and stop the practice so that customers are informed. Forcing the bartender to have a brief conversation with the customer about which brand of rum to use is entirely within the spirit of trademark law. So is stopping an ad that implies it is okay for a bartender to forego having a conversation about which brand of rum to use.

Besides, in order to maintain the trademark, Gosling’s needs to use it. This means they need to take steps that will inevitably (among other things) make people more aware of the idea mixing of rum and ginger beer. The benefit to Gosling’s is that they get some oversight on how the more specific “Dark and Stormy” label is used. The quid pro quo for society is that we get to consider (on a mass scale) the heretofore unconsidered (on a mass scale) possibility of a ginger beer and rum drink.

Here is a good question to ask:

If the Gosling company never existed, then would Zaya now be running an advertisement directed to the combination of rum and ginger beer?

This counterfactual is impossible to answer, of course, but it is the only question really worth asking. My hunch is that the answer is: “no, Zaya would not fing ginger beer worth focussing on without the spotlight Gosling’s has thrown on it.” If this is true, then it means that trademark law actively promoted innovation here. The possibility of trademark protection incentivized Gosling’s to either invent a drink, or publicize an obscrure drink with the idea that they would get some degree preferential treatment in the market. IOW, trademark law is not necessarily neutral with respect to innovation, but can actually promote innovation, especially forms of innovation not quite creative enough to be patentworthy.

Thanks to Mr. Balko for putting me onto this fine blog.

For those interested in such things, my patent law blog is at:

http://fedcirpatentcaseblurbs.blogspot.com/