October 25, 2021

Volume XI, Number 298

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October 25, 2021

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The Battle over BLACK IRISH Liqueur

Mariah Carey is in the middle of a brawl with Irish whiskey makers over her choice of brand name for her new cream liqueur products.

On August 16, Ms. Carey posted a photo on Instagram with the caption “Introducing BLACK IRISH. Two years in the making.” The brand name was inspired by Ms. Carey’s heritage – her father, who was Black, and her mother, whose roots were Irish.

BLACK IRISH Liqueur in the U.S.

In the U.S., Ms. Carey’s company, Lotion LLC, currently holds an “intent to use” application pending before the United States Patent and Trademark Office (“USPTO”). The application for BLACK IRISH in the U.S. was filed for several classes of goods, including, among other things, “wine; alcoholic coffee-based beverages; alcoholic beverages, except beer.” That mark has gone through relatively unscathed except for a challenge by the Irish Whiskey Association, which initially filed an extension of time to oppose the mark; however, no opposition was ultimately filed. Lotion did, however, amend the description to state that “to the extent any of the aforementioned goods contains whiskey, such whiskey shall be Irish Whiskey.” The bottle packaging notes  “CRAFTED IN IRELAND.” The product was launched in the U.S. in August 2021. Once Lotion files a declaration with the USPTO showing “use in commerce,” a requirement in the U.S., the mark should proceed to registration.

The Trademark in the EU

In the EU, the situation is different. There, the BLACK IRISH trademark is owned by Darker Still Spirits Co., which acquired the name in 2015 and has been selling a stout blended whiskey since June 2020. Ms. Carey filed for a trademark in the EU, but her mark was filed after the mark owned by Darker Still Spirits. That has not stopped Ms. Carey’s legal team from fighting for the mark in the EU, and the battles continue. The European trademark office is still evaluating the positions regarding the BLACK IRISH trademark.

The takeaway – be careful about geographic indications, even those that appear evocative or fanciful, as discussed in one of our recent posts, “When It Is More Than Just a Name – Trademark Significance of Geographic Indications.” It is also important to consider all areas of geographic expansion for your product and conduct a full clearance before moving forward with a brand name.

©2021 Norris McLaughlin P.A., All Rights ReservedNational Law Review, Volume XI, Number 267
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About this Author

Danielle M. DeFilippis Intellectual Property Attorney Norris McLaughlin New York, NY
Member

Danielle M. DeFilippis, Co-Chair of the firm’s Intellectual Property Law Practice Group, focuses her practice on intellectual property matters and litigation. She appears on behalf of individual and corporate clients in all phases of litigation from commencement through trial.  Danielle regularly serves as lead counsel in cases before federal and state courts, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office, and alternative resolution forums.

Danielle has represented clients in a variety of industries, most notably, food and beverage, liquor, jewelry,...

917-369-8841
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