Written by Reccy Midigo
It’s the holidays which means Maria Carey’s ‘All I want for Christmas’ has become a staple on people’s Christmas playlists. However, last month, the notable Christmas singer found herself on the losing end of a bid to trade mark the title ‘Queen of Christmas.’ While Mariah Carey may not be the first person that comes to mind when one thinks about trade marks, there are some important lessons which can be learnt from her attempt to become the official ‘Queen of Christmas.’
Mariah Carey, whose 1994 Christmas song ‘All I want from Christmas’ has been a chart topper in recent years, filed a petition in the US for several trade marks which included ‘Queen of Christmas,’ and ‘Princess Christmas.’ The trade marks were filed to allow her company, Lotion LLC, to use the names for branding some of their beauty products. If these trade marks were granted, her company would have had the right to stop and/or seek damages from anyone attempting to use the title ‘Queen of Christmas,’ and ‘Princess Christmas.’
In response to her trade mark applications, Christmas singer and song-writer Elizabeth Chan, filed a notice of opposition to the United States Patent and Trademark Office arguing that she is the true ‘Queen of Christmas’ having ‘used the title, designation, brand and mark commercially for years.’ She further argued that because she calls her daughter Noelle the ‘Princess of Christmas’ granting Mariah Carey the trade mark ‘Princess Christmas’ was likely to cause confusion to the public. Due to a lack of response to the opposition by Mariah Carey’s legal team, Trademark Trial and Appeal Board made a ‘judgement by default’ rejecting Mariah Carey’s trade mark application for ‘Queen of Christmas,’ and ‘Princess Christmas.’
Louis Tompros who led Chan’s legal team argued that ‘Mariah Carey’s company was engaged in classic trademark bullying; trying to monopolize the title ‘Queen of Christmas’ with a trademark registration.’ He further argued that ‘It’s important to stand up to bullies. That’s what we helped do here. Now, because of what Elizabeth did, nobody can claim exclusive and permanent rights to the ‘Queen of Christmas’ title.’
What lessons can be learned from Chan’s trade mark opposition?
Although the application and opposition were filed in the US, there are some important lessons for UK business owners. This situation highlights the importance of seeking legal advice before filing an application for a trade mark. In the UK, section 3 of the Trade Marks Act (TMA) 1994 outlines a list of things which cannot be registered as trade marks, one of which is descriptive marks: marks which describe the goods and services the trade mark covers. While naming a product after the goods and services being marketed doesn’t seem like a big deal, this practice is not allowed by the UKIPO to prevent businesses from claiming a monopoly over certain products and markets which sell every day products and services. Therefore, a good legal advisor should advise you about the challenges of filing a descriptive mark such as ‘Queen of Christmas’ before you file a UK trade mark application.
Equally important is conducting trade mark searches to see if identical or similar marks exist. Even if a trade mark is not registered, parties can bring a claim in the law of tort for passing off and argue, as Chan’s legal team did, that if the trade mark is granted it could result in a likelihood of confusion to the public with an existing brand. As Christmas is a common word, you should conduct a search for existing Christmas trade marks to ensure that you are not applying for a trade mark name which is similar or identical to one which already exists.
While not being granted the trade mark ‘Queen of Christmas’ is unlikely to affect Mariah Carey being synonymous with Christmas, the money and time which was spent on the ‘Queen of Christmas’ marketing strategy and money spent paying her trade mark attorneys to file the applications has been wasted. While someone as well off as Mariah Carey may be able to afford this wasted business expense, many start-ups and scale ups can’t afford to make this type of costly mistake.
Not sure if you should file a trade mark for your business? Get in touch with our IP and trade mark expert @Des Burley.