Painkiller, the Essex Street tiki bar that became a poster child for the citywide artisan cocktail movement when it opened last May, has been forced to change its name and give up its website as part of the settlement of a federal lawsuit in which a British Virgin Islands rum manufacturer alleged trademark infringement, according to court documents.
In the lawsuit filed April 12 in U.S. District Court, plaintiff Pusser’s Rum Ltd., which sells rum, cocktail mixers and rum products such as cakes under the brand name “Painkiller” sued tiki bar owners Giuseppe Gonzalez and Richard Boccato, claiming irreparable harm to its brand, unfair competition and unfair business practices, according to court documents on file in the Southern District of New York.
The owners of the 31-year-old rum company claimed the New York Painkiller operators had refused repeated requests to surrender the Painkiller name, forcing them into legal action. (Atlantic magazine documented one such demand back in August, in a story about copyrighted cocktails.)
The plaintiffs demanded that the bar stop calling itself and any of its drinks by the name Painkiller, for which they hold two U.S. trademarks, one for “alcoholic fruit drinks with fruit juices and cream of coconut and coconut juice,” and one for “non-alcoholic mixed fruit juices,” which they market as “Pusser’s Painkiller Cocktail Mix.”
Until recently, the Essex Street bar menu featured a Painkiller cocktail that was an icy concoction of rum and fruit juice that sold for $12. “Originally realized at the legendary Soggy Dollar Bar in Jost Van Dyke, this is our namesake,” read the revamped menu that debuted in February. “A blend of Virgin Islands rum, fresh juices of pineapple and orange, house cream of coconut, and a healthy dusting of nutmeg. Simply put, it will ease your pain.”
In its complaint, Pusser’s also demanded that the Lower East Side bar’s website domain, www.painkillernyc.com, be turned over to them.
In a consent order signed by both parties May 16, Gonzalez and Boccato, along with their corporate entity, Essex Street Bar & Lounge, Inc., agreed to be “permanently restrained and enjoined” from using the trademarked term Painkiller or “any other confusingly similar term” in association with any bar, restaurant, grill, lounge or other establishment, or any “beverage, libation or cocktail” unless it is made with Pusser’s rum. They also agreed not
to use the term in any marketing or advertising materials, and to give up their website domain within 45 days of the order, though the court did not require them to turn it over to Pusser’s.
The plaintiffs agreed not to object to the defendants using the name “PKNY,” which will be the new moniker, said events coordinator Lulu Martinez, who was on duty behind the bar Tuesday night and referred additional questions to the owners. As of yesterday, Painkiller’s website was still active, but any references to the drink “Painkiller” had been eliminated and several references to the bar as PKNY were present.
Now that the lawsuit is settled, the bar is facing a different challenge: city health inspectors visiting on Friday found numerous sanitary violations. (Read that story here.)
Late last night, co-owner Richard Boccato, who is also a partner in Dutch Kills and most recently made the news for getting into the ice-making business, declined comment by email.
“Unfortunately, we are not at liberty to discuss either of those issues at this time,” he wrote.
