Trademarking Pitorro: A Real-World Example
I know from my LinkedIn feed that I'm not the only trademark lawyer who slips into Trademark Lawyer Mode" while shopping or just driving around. Sometimes we wonder whether a particular mark is registered, or we instinctively spot potential issues that could arise if someone applied to register the mark, leading to a quick check of the United States Patent and Trademark Office (USPTO) register. As a side benefit, these exercises sometimes yield good, easy-to-grasp examples of trademark law in action.
Case in point: a recent conversation with my wife about pitorro, which is basically moonshine rum from Puerto Rico. The term might be getting a boost in visibility thanks to Bad Bunny's hit PIToRRO DE COCO, which chronicles some heartbreak-driven coconut pitorro consumption (the spirit is versatile and can be infused with fruit and other flavors).
The USPTO's Initial Refusal
A quick USPTO search turned up two registrations featuring the term "pitorro". One is for the word mark PITORRO, which instantly raises the question: How did that get registered? Wouldn't USPTO reject it for being merely descriptive or even generic, under Section 2(e)(1) of the United States Trademark Act (also known as the Lanham Act)?
(If you're wondering, descriptive refers to a feature of the product (like "strong" or "aromatic" in reference to coffee), while generic means it's the actual name commonly used for that type of product (in this case, "coffee")).
The USPTO did initially reject the application to register PITORRO, on the grounds that the mark "merely describes a feature of the applicant's goods ... and appears to be generic." In other words, the USPTO considered "pitorro" to be a description of run, just like "spiced" or "aged".
In support of its refusal, the USPTO provided this summary of what pitorro is:
Pitorro is the popular word for Puerto Rican moonshine rum. ... Pitorro is produced by distilling sugar cane. The resulting product is a clear liquid with a high alcohol content, generally higher than legal rum. ... Production and sale of pitorro is penalized by Puerto Rican laws. Puerto Rico's legally produced rums are sold worldwide. ... The lesser-priced pitorro does not bring revenues to the government. Hence, pitorro producers are pursued by both the Puerto Rican police forces and special revenue agents from the Treasury Department.
How the Applicant Fought Back
The applicant fired back with a smart response, pointing out that, as the USPTO's own description highlighted, pitorro was (back then) an illegal product. The applicant, however, had gone through a licensure process to produce rum legally (submitting copies of the different licenses obtained to the USPTO). By definition, the applicant argued, a legal rum such as theirs simply couldn't be pitorro.
That distinction, between legal rum and Boricua moonshine, was enough to overcome the USPTO refusal based on mere descriptiveness. The importance of this distinction was underscored by the USPTO's requirement that the applicant revise its goods description to "legally distilled Puerto Rican rum".
Could the Outcome Be Different Today?
It is now possible to legally distill pitorro in Puerto Rico, meaning that at least some Puerto Rico-made pitorro is legal. This in turn means that such pitorro would be covered by the goods description "legally distilled Puerto Rican rum". Were it considering the PITORRO application today, it is possible that the USPTO would reach a different result.
As trademark law adapts to cultural shifts and product legalization, applicants targeting previously informal or regional goods (such as pitorro) should expect more rigorous scrutiny. The USPTO may lean toward treating such terms as generic or descriptive, especially when they begin appearing in mainstream commerce.
This highlights the importance of understanding the trademark registration process early, crafting nuanced goods descriptions, and preparing for potential USPTO refusals grounded in genericness. For alcohol-related marks in particular, where traditional or colloquial terms often play a central role in branding, seeking counsel before filing is a smart move.
LUGO'S CRAFT PITORRO and Genericness
These shifts appear reflected in the USPTO's handling of an application filed for LUGO'S CRAFT PITORRO, nine years after the PITORRO application. The USPTO considered that "CRAFT PITORRO" was a generic term, only allowing the application to proceed after the applicant disclaimed any exclusive rights to use the term. This means they basically told the USPTO that they were not claiming to own the words "CRAFT PITORRO", and other companies can use those words too, as long as they are not using the name "LUGO'S" as well.
If a competitor in the pitorro space decided to challenge the PITORRO trademark claim, not unlike Taco Bell did with a New Jersey restaurant's claim to TACO TUESDAY, they would likely be on solid legal footing. In that case, Taco Bell successfully argued that "Taco Tuesday" was too common for anyone to own exclusively.
Two Takeaways for Brand Owners
1. Be cautious with descriptive or generic terms.
They might seem like a great idea, but they'll likely make your path to trademark protection a lot rockier.
2. Context matters.
A term isn't inherently generic or descriptive. Rather, it depends on what you're selling. "PITORRO" might be generic for pitorro rum, but it's totally fair game for, say, a line of baseball caps (unless there's a language out there where "pitorro" means "hat" ... you never know).
Whether you're looking to protect your amazing ron cañita (one of the many, sometimes poetic names for pitorro) or a slightly less intoxicating product, our trademark team is always ready to help you navigate the registration process and defend your brand.
The USPTO and PITORRO: Lessons in Branding Puerto Rican Rum
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
