litigation

We have been following various cocktail controversies in recent months, and we again thought of this one today because it appears that it got settled in recent days. Regardless of the exact, current, status, the main point remains — it really is possible to get into a full-blown trademark dispute over cocktail names, as this situation shows.

This tempest in a mug is all about … What do you need to make a real Dark ‘N Stormy®? According to Gosling Brothers Ltd.—the owner of several registered trademarks over DARK ‘N STORMY—any brand of ginger beer will do, but you better use Gosling’s Black Seal® Rum. Those planning to do otherwise may want to garnish their cocktail with a large wedge of trademark-infringement-defense.

By Frank Knizner, J.D. and Michael Volz, Attorney

A Dark ‘N Stormy®, like a Painkiller®, or a Sazerac™, is one of a handful of trademarked cocktails. On September 15, 2015, Gosling sued Pernod Ricard USA, LLC alleging that Pernod’s use of “Dark N’ Stormy” and “Black Stormy” in recipes and advertising containing Pernod’s Malibu line of rums infringed several of Gosling’s DARK ‘N STORMY registered trademarks. The case—Gosling Brothers Ltd. et. al. v. Pernod Ricard USA, LLC.—was filed in federal district court in Massachusetts.

The alleged trademark infringement stemmed from Pernod...

Kombucha law is on the front page of tomorrow’s Wall Street Journal. Because kombucha law is so interlinked with alcohol beverage law, this is to underscore some alcohol beverage points only touched upon lightly in the article (subscription required).

1. TTB has decided that most kombucha is beer for tax and permit purposes.
2. This is because it is fermented tea. It is beer rather than a “malt beverage” because it lacks hops and malted barley.
3. Most kombuchas are over 0.5% alcohol by volume during production, but less than that amount after bottling and at consumption. These can be called over-under kombuchas.
4. It is ok for a kombucha to be 0.5% alcohol by volume or higher, after bottling, but only if the product jumps through most of the hoops required for Budweiser. This would include permits, taxes, a Government Warning, no sales to minors, sales via the three tier system. These can be called over-over kombuchas.
5. Unlike Budweiser, the legal requirements would not include TTB label approval, because, like gluten free beer, the product lacks the hops and malted barely that would otherwise confer labeling jurisdiction upon TTB.
6. Most kombuchas need FDA rather than TTB labeling.
7. The article mentions a few recent lawsuits on these topics. So far there are five class action lawsuits. Two of...

Remember the internet went wild a few weeks ago when it sounded like some goofball was saying it had nearly exclusive rights to use the term Kentucky? The Associated Press ran with it here: “The owners of Kentucky Mist distillery say University of Kentucky attorneys have sent them a letter asserting the school owns the rights to the word ‘Kentucky,’ at least on clothing.” This story just keeps getting better and better, because first it just sounded crazy, and now it has, perhaps, blown up in the instigator’s face. I am sure you can picture the new crop of UK freshmen lovingly mashing this moonshine in the dorm or maybe in a chemistry lab run amok.

Kentucky Mist Moonshine Inc. (KMMI) filed a declaratory judgment action against the University of Kentucky in federal district court yesterday. In its complaint, Kentucky Mist asks the court to declare that its KENTUCKY MIST MOONSHINE mark does not infringe or dilute UK’s registration for KENTUCKY. Kentucky Mist also asks the court to cancel UK’s registration.

By Frank Knizner, J.D., Dan Christopherson, Trademark Lawyer, and Robert C. Lehrman, Attorney

UK obtained a federal trademark registration for KENTUCKY for clothing and other goods in 1997, after alleging it had acquired distinctiveness in the mark through its substantially exclusive...