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.