14 December 2022

Queen of Christmas? All Mariah Wanted For Christmas Was To Register a Trademark

Written by Rachel Toner

As soon as you hear those first few bars of Mariah Carey’s song “All I Want for Christmas,” you know that it won’t be long before decorations appear, gifts fill the shelves and saccharine Hallmark movies play non-stop.

The song and Mariah’s image are synonymous with the festive season. As such, it is not surprising that Mariah applied to trademark the phrase “Queen of Christmas” with the US Patent and Trademark Office, to help monetise her brand. Further applications were submitted to trademark “Princess Christmas” and the abbreviation “QOC”.

Unfortunately for Mariah, another singer, Elizabeth Chan, filed a series of oppositions against her trademark applications. Chan is a regular on the “Christmas circuit”, having released over eleven Christmas albums and was dubbed the “Queen of Christmas” by the New Yorker in a profile published in 2018. Chan’s explanation behind her objections appeared to be altruistic, when she stated that “no one person should hold onto anything around Christmas or monopolise it the way that Mariah seeks to in perpetuity. That’s just not the right thing to do. Christmas is for everyone. It’s meant to be shared; it’s not meant to be owned.” Another singer, Darlene Love, voiced her objections to the trademark applications, albeit only via social media. Having been dubbed the “Queen of Christmas” by David Letterman some 29 years ago, Love feels that the moniker rightfully belongs to her. Mariah’s lawyers sought a number of extensions, however given no counter argument was submitted to the US Patent and Trademark Office within the requisite timeframe, the trademark applications lapsed and thus unsuccessful by default.

Whilst the trademark applications in question were submitted in the US, the process is not dissimilar to that in the UK or the EU. A party can submit an application to the UK Intellectual Property Office and/or the EU Intellectual Property Office, subject to where they wish to seek protection of any marks. Following Brexit, the UK and the EU operate separate registration systems, but similarities remain. The mark in question must be distinct and unique and can include words, logos, sounds, colours or a combination of any of these things. It cannot be misleading, offensive, simply descriptive of goods or services to which it will relate. Once an application is submitted, the respective IPO office shall review and consider the mark and determine whether it is inherently acceptable. Once considered, the mark will then be published and third parties can submit oppositions to the registration on either absolute or relative grounds, as seen with Mariah’s application in the US.

A number of the absolute grounds for refusal include:

  • the mark is not sufficiently clear;
  • it is deceptive;
  • it is contrary to public policy;
  • it is made in bad faith
  • it is devoid of distinctive character;
  • it is a specially protected emblem;
  • consists exclusively of a mark which has become custom in current language or practice; or
  • its use is prohibited by law.

Whereas a number of the relative grounds for refusal include:

  • the mark is identical with an earlier trademark registered for identical goods or services;
  • it is similar to an earlier trademark registered for identical or similar goods or services and there is a likelihood it will cause confusion with the earlier mark;
  • the mark is identical or similar with to an earlier trademark which has a reputation within the UK; or
  • a third party owns an earlier right that takes priority, such as mark which has not been registered and has been used in trade with more than local significance, being the ground most appropriate for Chen and Love.

As such, there is a significant advantage in having a trademark registered as early as possible as the system operates somewhat on a “first come, first serve” basis. Should an opposition be filed, the application will not proceed to registration until the opposition has either been withdrawn or lost by the opponent. The applicant can defeat the relative grounds of opposition in some circumstances, such as where party opposing has not used the mark for a period of five years. Both parties have an opportunity to submit evidence and representations to the hearing officer, who will encourage the parties to agree an amicable outcome given the cost and time involved in proceeding.

It remains to be seen whether Mariah will take a fresh application within the US in light of the challenges received. She may look elsewhere such as to the UK and EU systems, where perhaps earlier rights cannot be established. Whether she will be crowned the official Queen of Christmas remains to be seen!

The commercial team at Carson McDowell regularly assist and advise clients in respect of trademark applications and oppositions.

If you would like any further information or advice on these issues, please contact Rachel Toner from the Commercial team.

*This information is for guidance purposes only and does not constitute, nor should be regarded, as a substitute for taking legal advice that is tailored to your circumstances.

About the author

Rachel Toner

Associate

Rachel is an Associate Solicitor within the Commercial team at Carson McDowell. Rachel regularly advises both public and private sector clients on a spectrum of commercial matters, from general commercial contracts, terms and conditions of business, specialist industry specific contracts such as manufacturing or franchise agreements to advice on data protection and intellectual property matters.

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