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May 08, 2013 | {category_name}

Tempus Fugit’s Cease & Desist (Abbott’s)

The inevitable has happened. Tempus Fugit Spirits has sent me a cease and desist letter asking me to stop using the Abbott's Bitters name as they feel they have a legitimate trademark on it. I disagree and I will explain why below. Though the letter is polite, like all cease and desists, it is implied that it will get much less pleasant if I ignore them. Consider this the first response. And it should be noted that legal arguments are complex and this post isn't an attempt to deal with all the issues, but instead it is being done to shine a light on something important that the cocktail community should be made aware.   

Let me tell you a story. When I was a young kid in grade school, the other kids liked to pick on me. Young boys, like chickens, have a pecking order and to rise into the upper echelon of playground superiority, one must display to the other kids that they are strong. So they pick a smaller opponent and attempt to cajole, embarrass, and verbally abuse then, or if need be, wail on them.

Alas, I never liked being picked on and wouldn't submit to the threats, I'd just hold my ground. This would escalate the threats of violence. Then they'd start pushing my shoulders with the flats of their palms. For some evolutionary reason this was a show of force. Then a circle of kids formed and started chanting "fight, fight, fight". Then I punched him in the face.

By this point the fight had technically started. For some reason bullies don't really want to fight, they just want to dominate. I, on the other hand, just wanted to be left alone without giving any ground, however just standing there isn't really holding ones ground, it could be confused with paralyzing fear, so I'd punch.

I learned really quickly that as a light weight you won't last long fighting a heavy weight, so you need to punch first and punch hard. These weren't sucker punches, we were squared off and ready to fight, I just went first because the other kids would be apprehensive. They started something and they probably didn't think it was going to get this far, but it did.

A punch to the face is a rather stunning experience and it does a great job of pissing the opponent off. The anger generated from said punch seemed to remove any apprehension the opponent had about fighting and I usually ended up getting tackled and rolled around in the dirt. Luckily, by the time we reached that point the school yard teachers have moved in to break up the fight.

The best part was that punch usually stopped the kid from picking on me. They knew that if they wanted to fight it was going to hurt, so they'd go pick on some less feisty opponent and I lived in relative peace until some other kid decided to rearrange the pecking order. They received the same treatment and I eventually earned a certain level of respect.

When I received this cease and desist letter, that feeling I had in the playground returned. I don't like when people try to force me to do something that isn't justified. My immediate response is to plant both of my feet firmly into the ground, and if necessary, push back and not let them play their little games. And that is what I am going to do.

Here is a copy of the letter sent by Tempus Fugit, and kudos to Mr. Troia for being polite and personable. Legal stuff, involving potential lawsuits, can be a difficult situation and being polite is always appreciated. However, when you file for a trademark on a very public topic you will inevitably irritate many people whether your letters are cordial or not. This is a case of "live by the sword, die by the sword". Mr. Troia, having took it upon himself to register the mark, knew one day he would have to face the community when he attempted to protect the trademark, as you must according to the law.

Abbott's Bitters have been talked about by bartenders and cocktail geeks for well over a decade, going all the way back to the days of the Drinkboy.com forums. Many people have sought the original Abbott's recipe in many different ways and attempted to recreate it. This, I believe, has put the Abbott's Bitters name firmly in the public domain.

However, Tempus Fugit saw an opportunity to trademark the Abbott's name and image, even though they did not have a product to sell. If you get the trademark then you can put anything in the bottle. I doubt Tempus Fugit would have ever had any interest in the product unless we, as a community, were talking about Abbott's Bitters publicly.

If you think trademarking the Abbott's name is a bit crass, you should be surprised by the fact that they have filed with the USPTO to have the original Abbott's label trademarked as well. The Abbott's "pouring man" logo is an image that was created before 1923 and is legally in the public domain. It was created and trademarked by the C.W. Abbott Company, which ceased to exist sometime in the 1940s and unprotected images created prior to 1923 no longer have copyright protection and have become part of the public domain.

Abbott's BittersHere is a link to the trademark application with the supplied specimen: Abbott's Bitters Case Id: 85538923

This "trademarked" image looks like Tempus Fugit simply copied the public domain image of the C.W. Abbott Company and claimed it as their own. I have a problem with this and so should you.

Tempus Fugit's trademark process has hit some bumps in the road and they have been unsuccessful at convincing the USPTO that the Abbott's Bitters phrase is worthy of registration on the Principal register and they have had to place it on the Supplemental registry. There is a significant difference between the two trademark registers. The Principal registry is basically the "A List" of trademarks and in a Court case being on the Principal registry is evidence enough to prove your trademark has meaning.

The Supplemental register is where potential trademarks go to earn "secondary meaning". That is to say that the name is currently too vague to be recognizable, however with enough use (e.g marketing and sales) it may acquire secondary meaning and the name becomes connected with that product (e.g. I say Abbott's, you respond with bitters). The Trademark Office requires the mark be on the Supplemental list for 5 years before it can be considered for the Principal register.

Also, the Supplemental register cannot be used to just hold a mark for 5 years, there actually needs to be sales and marketing. To date, I have yet to see any sales of the  Tempus Fugit Abbott's Bitters.

The good thing for me is that the Supplemental register provides no evidence of trademark rights in a court proceeding. That means Tempus Fugit needs to prove in court that they have given the name secondary meaning. If the trademarked phrase was on the Principal register I would have a more difficult time. The Abbott's image trademark is easier to defeat because it is a public domain image. The point is, being on the Supplemental register doesn't guarantee Tempus Fugit trademark status and a court can invalidate the trademark application if it sees fit.

Tempus Fugit Abbott's Trademarks

Abbott's Bitters phrase (Supplemental)
Abbott's Bitters Image (Principal)

Is it reasonable that one company should be able to single handedly control the history of a once revered product because they filed a couple of weak trademark applications based on the work and effort of the cocktail community?

Since I started writing Art of Drink in 2005 I haven't asked for much, if anything, from the cocktail community. In this case, I think we need to do something. The easiest thing to do is share this post on Facebook or Twitter. The best thing to do is send an email to John Troia at Tempus Fugit (.(JavaScript must be enabled to view this email address))  detailing your concerns about the trademark. Please feel free to cc me at .(JavaScript must be enabled to view this email address).

When I was deciding on the price to charge for my Abbott's Bitters I factored in the potential for legal difficulties from Tempus Fugit, so if you want to show your support you can pre-order/purchase a bottle of Abbott's Bitters or the Abbott's Kit (Abbott's plus a bottle of Acid Phosphate and Lactart and a PDF copy of Fix the Pumps). The bitters will ship in June.

Oh ya, one other thing. As most of you know, I am based in Canada. The Abbott's Bitters I produced were made in Canada, packaged, sold and shipped from here. There is currently no presence for my product in the US and probably not for the foreseeable future due to the legal concerns. Tempus Fugit does not have a trademark for Abbott's Bitters in Canada. Though Canada is often called America Junior or America's Hat (tongue firmly planted in cheek statement) I assure you that we are not American, as can be seen by our restrictive gun laws and socialized health care system.

Having everything done in Canada was intentional and is basically a legal firewall to protect my interests. I'm busy raising two young kids and I don't need the stress of expensive lawsuits interfering with my life.

There is an element of déjà vu in this trademark dispute because when Abbott's Bitters was originally introduced to the market in the 1870s, it was released as Abbott's Angostura Bitters and they were promptly served legal papers by the Angostura company. It seems fitting that I should suffer the same fate. Maybe it is a sign....

And if you haven't watched the slidecast on my Abbott's research, you can find it here: Abbott's Bitters Research

Update (2:06PM): With regard to this Abbott's trademark dispute, I am of the position that anyone should be allowed to recreate an Abbott's Bitters recipe. That means Tempus Fugit Spirits version along with my version and Bob's Bitters version can all co-exist peacefully. It is a know fact that most cocktail geeks will end up buying all three anyway, me included.

Mr.Downtown 08/05/2013

We’re all behind you, but that dig at the States was fairly unnecessary.  We’re not all assholes, you know.

Good luck anyway.

Mr. Uptown 08/05/2013

It’s not really a dig to observe that Canada has stricter gun laws and national health care - in fact, he could easily be complaining about that in that sentence.

Anyway, this is unimportant. What is important is that US copyright law is abysmal, and hopefully this won’t be an issue. I really like everything I’ve had from Tempus Fugit, it would be a shame if I had to stop buying their products.

Darcy O'Neil 08/05/2013

That was a tongue firmly planted in cheek statement, and no offence was meant. I try to keep things light hearted and I have many, many friends in the US. But I might edit that statement now, or put a star beside it. And thanks. Cheers

Vidiot 08/05/2013

This is troubling indeed. I am not a lawyer—and most specifically I am not an IP lawyer—but it looks like Tempus Fugit doesn’t have a leg to stand on, for the reasons you outline. I’m suprised that Tempus Fugit got an Abbot’s Bitters mark on the Supplemental Register at all, and very surprised they got the old artwork trademarked on the Principal Register. I wasn’t aware that I could take art that’s in the public domain and just trademark it on my own—I would think that *someone* must own the IP of the C.W. Abbott Company, even if they may not know about it (perhaps a descendant of a founder, etc.) I don’t know how often a trademark has to be renewed, but the Abbott’s mark owned by C.W. Abbott didn’t expire until 1986.

I think it’s interesting that Tempus Fugit attempted to trademark the Abbott’s Bitters wordmark and was refused because “Abbott” is a surname. Their attorney didn’t respond to the USPTO’s denial of their mark, and so the attempt was abandoned by the USPTO.

It’s neither here nor there, but it looks like both you and Tempus Fugit are using the “Best because it’s aged!” slogan in association with your bitters—but a quick & cursory (and possibly flawed) search of TESS doesn’t reveal any trademarking of that slogan.

I also hope they don’t screw up their bitters’ flavor and muddy the perception of what Abbott’s actually was. As samples of the original Abbott’s become rarer and rarer, two different-tasting products, both of which purport to represent the original Abbott’s, would be a real drag on the marketplace. I’m glad you’ve outlined your research methods and findings.

Have you trademarked your products in Canada?

John Troia sent a nice letter, and I’m glad he didn’t come after you guns a-blazin’ and heavy-handed. I hope it can be resolved without time-consuming and expensive litigation. (I saved a business card from some IP lawyers in Portland who spoke at Tales a couple of years ago about trademarks and copyright in the cocktail world, and can pass the info on to you if you want.)

Good luck! And I just ordered a bottle of yours.

Sam at Cocktailians

free1beer 08/05/2013

I have to say that is the nicest cease and desist letter I have ever seen. Of course that should not dissuade you from defending your product.

Josh Miller 08/05/2013

As a guy who’s received a C&D letter stemming from a blog post, I feel your pain and hope you can work it out. I love everything I’ve tasted from TF, but I will not support a company that is unnecessarily litigious. Now off to pre-order a bottle of your bitters…

Darcy O'Neil 08/05/2013

When companies cease to protect their trademarks and copyrights they become public domain. Two clear cases are Kerosene and Thermos where both have become generic marks because they weren’t protected. Kleenex and Xerox almost suffered the same fate.

Troy Patterson 08/05/2013

Don’t take it as a dig, but as things which necessarily need to be addressed. Plus, I give Darcy plenty of crap for being Canadian to make up for it.

Darcy O'Neil 08/05/2013

Yes you do Troy smile

emtilt 08/05/2013

You should be careful of your wording. While trademarks must be defended, copyrights have no such requirement. Copyrights last for the term dictated by law after creation of the work (though eventually there is an opportunity for renewal, which requires action). Of course, this isn’t particularly relevant to your current difficulties, which seem to be predominantly a trademark issue.

Joseph Price 08/05/2013

Agreed. I was expecting something much more aggressive.

Vidiot 08/05/2013

This—and what Darcy said—is all true. But Abbott’s wasn’t genericized like Kerosene, Thermos, aspirin, etc. I understand why Tempus Fugit is doing what it’s doing—if you have a mark, you have to be able to show that you’ll defend it—even if I don’t think they should’ve been able to get the mark in the first place. It’s like the Pusser’s affair—they didn’t actually have a trademark on a recipe, but went after Painkiller because they thought it would dilute their trademark. And who knows who would’ve won in court (though I think Painkiller had a strong claim), but it’s a shame that litigation is so expensive that it’s easier to change the name of a thriving business to make the threat go away.

Unlike the Pusser’s and Gosling’s situations, though, this is a much more clear-cut trademark issue.

John Cowling 08/05/2013

I just sent of a message to Mr Troia at TF.  I’ll be very interested to see if he responds. cc:ed you.  Hang in there Darcy.

Richard 09/05/2013

Aside from the technicalities (which seem somewhat shaky, with reason), I don’t see how this is a reasonable copyright at all. They didn’t invent it and they don’t even make a copy of it yet. Copyright wasn’t created so you can cash in on dead people’s inventions and names, it was made to protect your own.

Three Brothers' Whiskey 10/05/2013

Well Written, A sound argument and I believe they have no case. Good Luck with your Business.
David

Brian 12/05/2013

I think the image bit is pretty complicated. An image has both a trademark and a copyright, and if the copyright is in the public domain, I don’t see why, legally, it couldn’t be trademarked. Which would mean, seemingly, that you could use the Abbott’s Bitters gentleman in a non-commercial sense, but if you were to put it on a bottle or product meant for public consumption, you may be infringing. I think there’s a lot of grey area here, but a trademark and a copyright are two different things. Seems like there’s a legal precedent here for the Popeye images, if anyone’s interested. The trademark’s already been granted for the image. Spilt milk, I’m afraid.

This whole thing sucks, but I don’t think Tempus Fugit is being overly litigious. They do own the trademarks, and trying to unseat those would be pretty difficult (and expensive!)

Either way, I want to try both bitters, whatever they’re called!

AH 13/05/2013

It strikes me there could easily be a win-win here. Come to an agreement to license the name from them at a trivial cost and co-promote. They don’t lose what they perceive as IP and your work is not in vain. The cost of litigation will be higher for both of you and much less benefit should it.go there.

Darcy O'Neil 13/05/2013

I fully agree, there could be a win-win situation, I’m just waiting for a response from a letter I sent them. I’ll keep everyone updated.

Gwydion Stone 02/06/2013

Iron fist in a velvet glove.  As pretty as it is, it still reeks of condescending chest-puffery and ever-so-subtle sabre-rattling.

dr_bombay 13/07/2013

so, i meant to order some of these earlier, and now i’m late to this whole situation and i need some clarification: can i still order some of yours, and hopefully simultaneously assist you in case this comes to a court situation?

Darcy O'Neil 13/07/2013

I’m still taking orders: http://www.artofdrink.com/prod… Cheers

dr_bombay 13/07/2013

well then. please stand by. order incoming : )

Abbott's Bitters 19/08/2013

So, After 3 months, what’s the update?

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