Lawsuit Costs Painkiller its Name and Website

Painkiller, the popular Essex Street tiki bar, plans to change its name to PKNY.

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.

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  • http://www.facebook.com/christopher.carlsson Christopher Carlsson

    BOYCOTT PUSSERS RUM !
    Don’t those swine have anything better to do?
    As if any of us would confuse a quality Tiki Bar in NYC with their rum.
    Please, Were their lawyers just bored and needed to harass someone to justify their retainers ?
    I’ll never drink Pussers again !

  • Dangelstarr

    That piece of bar you are calling quality….please mister, get a life!!! We will forever join our friends in Virgin Islands and have ourselves some PUSSERS RUM whilst lying on a white sand beach. Perhaps what you drank last night have you confused, remember you cannot infringe on the rights of others.

  • Steve

    just for the record mr dingleberry, if you look up the historical record of the Painkiller cocktail it was created long before Pusser’s Rum was a company and not by them, so who exactly has decided to infringe on the right of who?  PKNY is one of the best Tiki Bars in the world and this incident will cause significantly more damage to the Pusser’s brand than it will to the bar.  enjoy your white sand, we’ll take our PKNY any day of the week!

  • Paula Wirth

    Won’t be buying any rum from these guys, to be sure. What a stupid move by a company that could have used this opportunity to sell their product at the bar, instead.

  • tikiphile

    no more Pussers!

  • Emily

    If they change their name to PKNY, they are bound to get sued by DKNY. This is exactly what happened to another local venue, TKNY, also known as Compact Impact. They were a great and very creative boutique electronics store on 3rd and C up until 2007 (when the lawsuit struck).

  • http://pulse.yahoo.com/_NMZRAQBZHQTVBDNTBBIMTLGV4M Elmer

     Amen — Christopher doesn’t get it

  • http://pulse.yahoo.com/_NMZRAQBZHQTVBDNTBBIMTLGV4M Elmer

     LMFAO One of the best Tiki Bars in the world.  Thats the most RIDICULOUS thing I HAVE EVER HEARD.  Its another hack bar in the city with ten thousand other bars – there is nothing special or unique about this bar.  And how can it be a Tiki Bar when its NOT EVEN ON THE WATER !?!?  LOL

  • http://pulse.yahoo.com/_NMZRAQBZHQTVBDNTBBIMTLGV4M Elmer

    I don’t know.  Its not
    like the Pussers company doesn’t allow any bars to make the drink
    “Painkiller”, its that the bar in NY was using the
    “Painkiller” name in its Tiki Bar’s name.  CLEARLY riding the coattails of all the
    investment and expense that the Pusser’s company put in over all the years and
    introducing it to the North American Market (Over $1 million -
    http://www.pussers.com/joby.htm).

     

    Look I’m a longtime Sailor and I’ve been to the BVI’s and
    also sailed and been to Annapolis MD in which they have another Pussers (which is
    one of the few in North America).  I also
    live & sailed the NY, NJ waters and LI Sound for over 20 years and when I
    think PAINKILLER I think PUSSER’s.  Plain
    and Simple.  They’ve put the time, money
    and effort to promote PUSSER’s which for any self respecting sailor is
    synonymous with PAINKILLERS.

     

    Not that any bar can’t make one – But Pusser’s made it
    famous (with the ok of original inventors of the ~tiny~ Soggy Dollar bar in the
    BVI’s which is called the “Soggy Dollar” because you have to anchor
    out and swim to the bar to get a drink :)).

     

    With that said I feel the exact same way with a “Dark n
    Stormy”.  You can make it with a
    different dark Rum other than a Goslings (like for instance a Myers’ and Ginger
    beer ~blech~) but when any self respecting Sailor thinks “Dark n
    Stormy” they think Goslings.

     

    Just a little bit of perspective from a “Sailor”
    where I guess traditions are still cherished — and I think most
    “good” bartenders and bars feel the same way.  Tradition in making a classic cocktail is
    paramount.  If not then you are just
    another one of those low class college bars like down Jersey Shore that serve
    any alchohol (usually the cheapest) and call it a “xxxx” (insert
    classic cocktail name here).

     

    IMHO – Cap’t Jack Sparrow….lol

     

  • http://pulse.yahoo.com/_NMZRAQBZHQTVBDNTBBIMTLGV4M Elmer

    Just as an FYI — EVEN THE DAMN BAR THAT INVENTED THE PAINKILLER (SOGGY DOLLAR)
    GIVES CREDIT TO PUSSER’s FOR THE PAINKILLER _ HERE IS A PICTURE I TOOK
    YEARS AGO AT THAT SOGGY DOLLAR !!!!
    http://tikiroom.com/img/74486x4e4b33ec.jpg

  • NG

    Pusser’s Rum is fantastic… little hipsters just want to steal a cocktail and then dont have any respect for the business that gave them a job.

  • http://www.imocentral.ro/vanzari/apartamente/cluj-napoca Vanzare Apartamente Cluj

     Ohh wow..unbelievable! I know some bars here that have drinks called painkillers – does Puss Rum have international patent on the name?

  • http://www.facebook.com/lumag Remy Chevalier

    I went there once, nice place… Had no clue… Pusser’s is just too good to boycott, they both have a point, maybe over reaction from both parties… people just love to be a-holes!