Your client, Ron McDaniels, is a successful businessman who has opened several restaurants and other beverage/food companies over the past ten years. One of his companies, Emerald Isle, Ltd, extensively markets and sells Irish whiskey in Illinois, Indiana, Michigan and Ohio. It has used the mark GAEILEO, a Gaelic/Irish-sounding, but entirely invented word, on its whiskey and other liquor products since 2003. In 2006, Emerald Isle applied for and obtained a federal registration for the GAEILEO mark. Mac Co., Inc. began making and selling glassware products marketed to bars and restaurants in Ohio and Kentucky under the GAELEO mark in 2005. In 2007, Mac expanded its business into Tennessee and West Virginia.
(1) Emerald Isle has sued Mac for trademark infringement under the Lanham Act. Analyze Emerald’s likelihood of success on the given facts and specifically state the likely outcome of the case with respect to both parties regarding their respective marks. How could Emerald Isle have better protected itself in this example? How could Mac have better protected itself?
(2) Assume for purposes of this Question 2 only that instead of GAEILEO, Emerald Isle had used the word UISGE BEATHA, the Gaelic word for “whiskey,” which mark was also subsequently adopted exactly by Mac. In Emerald Isle’s federal application, it claimed that the mark was “arbitrary” in relation to its claimed products. If the rest of the information set forth in the main fact pattern above is the same, how does the change in the mark affect Emerald Isle’s chances of success in a trademark infringement suit against Mac, if at all?
(3) Assume for purposes of this Question 3 only that McDaniels has presented you with a drawing of a new design of Emerald Isle’s GAEILEO mark as set forth on Exhibit A to this exam and asked whether you can obtain a separate federal registration of the design. When asked about the origin of the design, McDaniels tells you that consumers routinely mispronounce the word GAEILEO as “gay-EEY-lo” and that the image of the character “Gay Leo” will help consumers properly pronounce Emerald Isle’s well-established word mark. Would this usage be prohibited pursuant to Section 2(a) of the Lanham Act? How would you advise McDaniels to proceed?
If you need additional facts, or need to make assumptions, state so. You should include alternate views of an issue if there is disparate treatment of the issue by different courts. You should always refer to the appropriate section(s) of the Lanham Act, where applicable.
The paper should be 9 pages.
“Gay Leo” © GAEILEO
( EXHIBIT A) in the file.