gosling bros. v. pernod ricard - dark n stormy complaint.pdf

7/23/2019 Gosling Bros. v. Pernod Ricard - Dark N Stormy complaint.pdf

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C.A. No.

UNITED ST TES DISTRICT COURT

DISTRICT OF M SS CHUSETTS

GOSLING BROTHERS LIMITED;

GOSLING S EXPORT (BERMUDA) LIMITED; :

GOSLING-CASTLE PARTNERS, INC.; AND

CASTLE BRANDS, INC.

Plaintiffs,

v.

PERNOD RICARD USA, LLC,

Defendant.

COMPL INT

Plaintiffs, Gosling Brothers Limited, Gosling s Export (Bermuda) Limited, Gosling-

Castle Partners, Inc. (collectively Gosling ) and Castle Brands, Inc. ( Castle Brands ) bring this

action against Defendant, Pemod Ricard USA, LLC ( Pemod ), for federal trademark

infringement and for federal and state unfair competition. By their Complaint, Gosling and

Castle Brands seek injunctive relief and monetary damages and allege as follows:

P RTIES

1. Plaintiff Gosling Brothers Limited ( Gosling Brothers ) is the oldest company in

Bermuda and has a principal place of business in Hamilton, Bermuda.

2. Plaintiff Gosling s Export (Bermuda) Limited ( Gosling s Export ) is wholly

owned by Gosling Brothers. Gosling s Export is a producer and exporter of fine rums.

is a

Bermuda company with its principal place of business in Hamilton, Bermuda.

3. Plaintiff Gosling-Castle Partners, Inc. ( GCP ) is the global distributor of the fine

rums exported by Gosling s Export. GCP is a Delaware corporation with its main office at 78

Oak Street, Weston, Massachusetts.

Case 1:15-cv-13360-GAO Document 1 Filed 09/15/15 Page 1 of 18


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4. Plaintiff Castle Brands is the exclusive United States distributor of the rums

produced and exported by Gosling Export and distributed by GCP. Castle Brands is a Delaware.

corporation with its principal place of business at 122 E. 42nd Street, New York, New York.

(Gosling Brothers, Gosling s Export, GCP and Castle Brands are collectively referred to herein

as Plaintiffs. )

5. Upon information and belief, Defendant Pernod Ricard USA, LLC ( Pernod ) is a

limited liability corporation organized under the laws of Delaware with its principal place of

business at 250 Park Avenue, New York, New York.

JURISDICTION ND VENUE

6. This is an action for trademark infringement and false designation of origin

arising under Section 43(a) of the Lanham Act, 15 U.S.C. 1125, and for related claims of

common law unfair competition under Massachusetts law. This Court has jurisdiction over the

Section 43(a) claims pursuant to the provisions of section 39(a) of the Lanham Act, 15 U.S.C.

1121. This Court has jurisdiction over the common law claim for unfair competition brought

herein under the provisions of28 U.S.C. 1338(b) because that claim is joined with a substantial

and related claim under the Trademark Laws of the United States, 15 U.S.C. 1051, t s q

7. This Court has personal jurisdiction over Pernod because it conducts extensive

business in Massachusetts. In addition, Pernod regularly solicits business in Massachusetts and

Pernod has caused harm to Plaintiffs in this District.

8. Upon information and belief, venue is proper in this Court pursuant to 28 U.S.C.

1391(b) and (c) because a substantial part of events giving rise to this action occurred in this

District. Pernod distributes its products throughout Massachusetts and the United States and

promotes its products nationally, utilizing the Internet and social media web sites such as

YouTube to avail itself of Massachusetts customers and potential customers.

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F CTS

Goslings lack Seal Rum

9. In the spring of 1806, James Gosling, the son of a wine and spirits merchant,

chartered a ship and set sail on the barque Mercury from England bound for Virginia with

intentions of expanding the family business. He did not make it to America.

10. After more than 90 days at sea, James Gosling s charter expired. With no wind to

guide the Mercury to America, the ship pulled into the only port between London and Virginia -

St. George s, Bermuda. From this inauspicious start, one of the [illest and most recognizable

rum brands in the world emerged - Goslings Black Seal Rum.

11. Around 1850, the company, then known as Gosling Brothers, brought oak barrels

containing rum distillate to Bermuda. After experimenting with the blending process, Gosling

Brothers formulated a unique blend of black, aged rums and offered them for sale under the

designation, Old Rum. As it was only available in draught, customers would bring their own

containers to a Gosling s store and get a fill up of Old Rum directly from the barrel.

12. Eventually, after the end of World War I, at the behest of a growing, loyal

customer base of locals looking for convenience combined with the demand of visitors to

Bermuda wishing to bring Gosling s Old Rum back home with them, Gosling Brothers arrived at

a solution. It began selling black rum in champagne bottles reclaimed from a nearby British

Officers Mess. Gosling Brothers corked these bottles and sealed them with a black wax and

branded the product as Goslings Black Seal Rum.

13. Gosling s business has continued to expand far beyond its beginning in Bermuda.

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The Birth of the DARK STORMY

14. In post-World War I Bermuda, the Royal Naval Officers Club in Bermuda

operated a ginger beer factory. In time it became clear that ginger beer perfectly complemented

the distinct characteristics of Goslings Black Seal Rum.

15. Since then, the specific combination of Goslings Black Seal Rum and ginger

beer has proven to be widely popular.

16. When mixed together, Goslings Black Seal Rum and ginger beer combine to

form a cocktail the color of a cloud only a fool or a dead man would sail under. Thus, the

genesis of the mark, DARK N STORMY.

17. By virtue of its long, continuous, and widespread use, DARK N STORMY has

become a well-known and iconic brand that is associated with the rum produced by Gosling.

18. In addition to its extensive common law rights to the DARK N STORMY

trademarks throughout the United States, Gosling owns many trademark registrations for

DARK N STORMY, its related products and designs including the following:

M RK WORD/DESIGN GOODS REG. DATE CLASS Status

DARK N Word Pre-mixed September 33(wine Incontestable

STORMY alcoholic 17, 1991

and

cocktail, spirits)

namely rum

and ginger

beer

DARK N Word Clothing,

October 29,

25 Incontestable

STORMY namely,

1996

(clothing)

shirts, hats

and jackets

3

DARK N Word A kit July 8, 2008 33(wines Incontestable

STORMY containing

and

Gosling s spirits)

Black Seal

Rum and

Ginger Beer

for Preparing

Alcoholic

Cocktail

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DARK N Word Bar services February 9, 43 (bar

Incontestable

STORMY

2010 services)

5 GOSLING S Word and Design

Pre-mixed

March 5, 33 (wines

Valid

DARK N alcoholic 2013

and

STORMY cocktail, spirits)

BLACK namely rum

SEAL and ginger

beer

Gosling s registered and common law marks are collectively referred to hereinafter as the

DARK N STORMY Marks. Copies of each of the above referenced registrations from the

u s Patent and Trademark Office are attached hereto as Exhibit

19. Four of the DARK N STORMY Marks have achieved incontestable status

under 15 U.S.C. 1065, thereby constituting conclusive evidence of the validity of the DARK

N STORMY Marks, the registration of the DARK N STORMY Marks, Gosling s

ownership of the DARK N STORMY Marks, and Gosling s exclusive right to use the DARK

N STORMY Marks in connection with its goods and services.

20. The one Gosling DARK N STORMY Mark yet to achieve incontestable status,

GOSLING S DARK N STORMY BLACK SEAL, constitutes prim f ie evidence of the

validity of the registration of that DARK N STORMY Mark, Gosling s ownership of it, and

Gosling s exclusive right to use it in commerce in connection with those products and services.

21. Gosling expends considerable money advertising its rum products, and in

particular the DARK N STORMY Marks. This marketing includes targeted advertisements in

trade publications that emphasize that the DARK N STORMY is trademark protected. The

August 2015 edition of the Beverage Media Network Magazine, for example, contains the

following advertisement:

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M O S T ( O ( K T A I L S

( O M E W I T H A N A P K I N .

T H E D A R K N S T O R M Y

( O M E S W I T H A T R A D E M A R K .

22. Gosling promotes its rum on its website htlp:llwww.goslingsrum.coml. Through

this website, Gosling also promotes the DARK N STORMY Marks.

htlp:llwww.goslingsrum.comlcocktails/dark-n-stormy-cocktail/:

~ H O M E B D U l U S O U R P R O D U C T S E N J O Y G O S l I H G S B l D G f l H O H I M P O R H R G I l I N m U C H

lll il

D R K N S T O R M Y

I N G R I N T S

1.5

G os li ng s B l ac k S ea l R um

G os li ng s St or my G in ger B eer

M T H O

I n a t al l g las s f il le d w it h i ce ad d 4 5 o z o f G os li ng s St or my G in ger B eer

a nd t op w it h G os ti ng s B lac k S ea l Ru m. G ar ni sh w it h a l im e w ed ge

optional .

C os l in g s B la ck S ea l R um s S Ig na tu re D ri nk .

23. In addition to providing consumers with the know-how and ingredients to mix

their own DARK N STORMY, Gosling markets and produces a pre-mixed alcoholic cocktail

comprised of Gosling Black Seal Rum and ginger beer:

6

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24. In addition to its traditional marketing channels, Gosling expends considerable

resources to promote the DARK N STORMY Marks on social media pages on Facebook,

Instagram, YouTube, Twitter and Pinterest. These social media platforms reinforce the

registered trademark status of the DARK N STORMY Marks:

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8/18

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gosling bros. v. pernod ricard - dark n stormy complaint.pdf

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