Adventures in trademark law: the Sazerac saga

Mar 06 2012 Published by under Uncategorized

So, this happened:

The letter is, of course, in response to the very delicious Sazerac cocktail we all drank together during Mardi Gras a couple of weeks ago, and I have to admit that I'm pretty flattered. Moi, with my measly little 200-hits-a-day, life-in-academia-and-sometimes-cocktails blog, warrants a quasi cease-and-desist letter from a big ass IP law firm? They must think I'm super influential and/or making money off this thing! Believe me, Cooley--I wish.

Now, let's break this down a bit, shall we?

1. Sazerac brand rye is named after a bar that itself was named after the Sazerac cocktail, so let's not kid anyone that your version of the cocktail is "authentic." In fact, the original wasn't made with whiskey at all, but with cognac.

2. Though I never "purported" (your words) to be authentic, as far as I can tell, there's nothing tragically wrong with my recipe. I've got all the main ingredients--rye, absinthe rinse, sugar cube, Peychauds, lemon peel--the only distinction is that I don't insist upon your brand, and that I happened to pour myself a double. It's not like I made a rum & coke, here. I've had a veritable host of Sazeracs at countless bars in my day, and I could probably count on one hand the number that were made with actual Sazerac brand rye.

3. Either way, you know what's one thing you'll never catch me putting in a Sazerac? BOURBON. So your suggestion to use Buffalo Trace  (which you conveniently also produce) as an alternate to rye in my Sazerac cocktails is where you really lost my respect.

4. If I'm reading this post on cocktail IP rights correctly (yes, this is a thing! ht William Gunn), even if the name of a cocktail is trademarked, the trademark does not protect its ingredients or recipe, since these things are technically "mixtures," and mixtures can only be patented, not trademarked. Moreover, it's not even clear to me that the Sazerac brand TM in fact covers the Sazerac cocktail name.

5. My guess is that you may have tm'd the name "The Official Sazerac Cocktail," which--let's be honest--is about as meaningful as "Ray's Original Pizza." If you have, yay for you! But it doesn't preclude anyone from making themselves a regular old Sazerac any way they damn please, and it certainly doesn't keep that person from writing about it on the internet.

26 responses so far

  • NatC says:

    BOOYAH!
    (Interesting that this company has "sold alcohol in the US for over a century". Wasn't there a good 13 years in there that doing that would have been illegal?)

    • Scicurious says:

      Ok, so I just watched the documentary "Prohibiton". I HAVE to put in a plug for it because it was fantastic! And you'd be amazed at the ways people got around it. For example, the company could have sold alcohol to pharmacies during Prohibition, as it was still prescribed as medicine (and BOY was it prescribed). Learned a lot of really cool stuff.

      And yay, Dr. Becca!

  • katiesci says:

    Way to defend your cocktail!

  • Dr. Koshary says:

    Bizarre. This seems like a foolish waste of that law firm's time, money, and energy, at best. Buffalo Trace Distillery needs to get over itself, it seems.

  • danitosupreme says:

    While ignoring for the moment the fact that they suggested bourbon when rye is what the recipe called for, I hope we can ignore for a second the brand they represent and separate the law firm from the distillery.

    Because I love Buffalo Trace bourbon more than just about anything ... it's so good!

  • becca says:

    Ha!
    Actually, it's a quasi-nice letter as far as it goes, aside from being written by a lawyer. Whether it would be nastier if they had an actual legal complaint, I do not know.

  • Whoop Whoop, douche alert! What a bunch of dummies to waste time on something as trivial as this.

  • Dr 27 says:

    What a douche, and goodness! How much free time do you have on your hands to try to trace every little thing that it's written about a brand? Seriously? It's come to this? DFS. Keep on rocking Doc, you're awesome, and I miss your mixes and cocktails.

  • My guess is that you may have tm'd the name "The Official Sazerac Cocktail"[.]

    You don't have to guess. You can search at the USPTO trademark database, and find that the only registered trademarks with the word "Sazerac" in them are for the single word mark SAZERAC.

    As far as why they sent you this letter, the owner of registered trademark is required to affirmatively "police" the mark or they can be deemed to have "abandoned" it, thereby losing the right to enforce the mark against *all* infringers. They sent this letter as part of their general policing of their mark, and to establish that they are not abandoning the SAZERAC mark to become a generic description of the cocktail.

    • Mr. Gunn says:

      As the linked post says, if Dr. Becca was selling shirts or pre-made drink mixes, they would have a claim, but they can't tell her that she must mention their brand in a recipe. The drink, and published recipes describing the drink, has been around long before this company.

      Also, as someone who lived in New Orleans and has had many a Sazerac, I can tell you they're usually made with Old Overholt rye. I have had some young bartenders who don't know what they're doing try to make it with the Sazerac brand rye and they weren't bad, but after this, I couldn't possibly drink it & will insist on Old Overholt & will tell this story to any bartender who'll listen.

  • How much free time do you have on your hands to try to trace every little thing that it's written about a brand?

    HAHAHAHAHAHAHAH!!!!!!!! Cooley is obviously being paid legal fees by the owner of the SAZERAC mark to police the mark. I am sure as part of this, they Google "sazerac" every so often.

  • neuromusic says:

    CPP- they prob don't even Google it... they probably have a Google Alert setup and a stack of 5 different form letters. Anyone claiming to publish a "Sazerac" recipe gets the "no, THIS is the Official (if not authentic) recipe"

  • Namnezia says:

    Maybe everyone should just start randomly posting the word Sazerac in a bunch of different places to keep them busy!

  • That is ridiculous, I love a Sazerac (after first trying one last year) and can't believe their heavy handed tactics. I will be insisting on Old Overholt rye in the future if they have it (and will have to obtain a bottle for future parties). Thanks for sharing their letter, companies can't be allowed to continue behaving in this way hoping we will all be ignorant of the law.

  • Cherish says:

    Aside from the legal implications, policing it gives them a bit of publicity, as well. No?

  • Ha! Best line: "no doubt your readers will appreciate the attention to detail and authenticity you will be providing them by posting the correct sazerac recipe on your blog."

    As a reader, I appreciate the attention to detail and authenticity you are providing me in this very post.

  • Kyle says:

    Very interesting. I'm a lawyer (though not in private practice anymore) and I used to do this sort of work (though not with Cooley or for Buffalo Trace). Here are a few things I can say about this:

    1) This isn't a demand letter. They don't really require you to do anything (more like suggesting you alter the "official" recipe. That's because they pretty much know that, at this point, they have no legal grounds to do so.

    2) There's a concept in trademark law called dilution of the brand. That's what happened to Escallator (that used to be a brand of moving stairs) and Aspirin. Now anyone can use those terms to describe their own branded products. It's almost the goal of marketers (Do you "Yahoo"? Let's Google it to see!) and gives trademark lawyers heart palpatations -- all that money and time spent developing a brand just goes away. So you do things to prove to the world that you own and police your brand name. Like sending demand letters to websites. That shows you're asserting trademark rights, and it's usually against someone without time or money to fight, so they just make your change. Then you can show the world (in your next trademark lawsuit or trademark application filed with the USPTO) that your mark is "so strong" and covers so many products, industries, etc. Monster Cable is the preeminent example of this strategy gone amok. Google (heh, see that generic use of the trademark GOOGLE for electronic searching?) monster cable trademark and you'll see what I mean.

    3) A previous commenter is slightly mistaken about Sazerac's trademark. They have the rights to SAZERAC for "Alcoholic cocktails," and it's been registered since 1954 (Reg. No. 0305857). I agree that that doesn't mean that they can necessarily control bar mixtures, but it does mean that they have, or will have, some rights to Sazerac beyond just the straight rye wiskey they sell. And to prevent dilution (see # 2) they want to exert some control over that.

    4) As a corollary to (2) and (3), they're also looking to expand the scope of the brand, so it will be easier for them to get registrations for other goods and services in the future, and so they can argue that their mark is "famous" if someone else tries to sell a SAZERAC branded alcoholic beverage (say, a "Sazerac in a can"). Could they stop someone else from selling a premade sazerac as a Sazerac? That's a tough, fun, interesting trademark question.

    Your response is pretty good, and it shows some of the weaknesses in their enforcement strategy. But the trademark lawyers have a tough job here-- their brand name alcohol is also the (somewhat) generic name of a drink. How do you protect your brand while not pissing people off? It looks here like their strategy is to flood the market with their "version" of the drink, and try to convince people that sazeracs are made only with Sazerac rye, the same way that when a patron orders a "Captain and Coke," they're expecting it to be made with Captain Morgan, not some inferior sub-well spiced rum. (I think the Buffalo Trade Bourbon alternative is actually quite disastrous to their strategy, as it seemingly admits that you can use other liquors in a sazerac cocktail.)

    Recipes can't be copyrighted, and "mixtures" can't be trademarked, but trademarks are used to help consumers not be confused as to the source of the product or service provided. What would happen if Wild Turkey suddenly made a Wild Turkey Sazerac Mix? Would consumers think that the mix would have Sazerac rye in it? These are questions that you spend hundreds of thousands of dollars on experts to answer. But at a minimum, Sazerac needs to do some work up front to make sure that their liquor doesn't become generic. And that means picking on websites (whether they get 200 or 200,000 hits per day).

    (I have an old blog that delves into some of these issues) http://arbitraryandfanciful.wordpress.com/tag/likelihood-of-confusion/

    • DrugMonkey says:

      Thanks, nice to see some real legal opinion instead of that douchey pseudo lawyerly mumble of the prior commenter.

  • Heather says:

    Dr, Becca,
    Thanks for your comical post.
    It would be much funnier if the Sazerac company were not suing me for trademark infrigement. I have a small distillery in N.E. Ohio. I named it RED EAGLE spirits. It was named in honor of our local sports team mascot. They are an extremely litigious company. They have quite literally "too many lawsuits to count". (and to Mr. Gunn, I use Old Overholt for the cocktail too, you can't beat it for the price)
    Thank again,
    Heather Sigel
    RED EAGLE SPIRITS and Distillery ;)

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