Trademark lawyers get excited when trademark protection maneuvers make international headlines; add glamorous royals Harry and Meghan to the mix, and everyone has an opinion on the ramifications of Sussexit and the SUSSEX ROYAL trademark.
Fortunately not everyone has to contend with a petty queen, but there are still some important takeaways from the Sussexit trademark debacle. Even if you weren’t born to the purple, when selecting a brand it is good to keep in mind that trademark clearance involves an evaluation of a number of different factors, not just availability of a mark on the trademark Register.
Common Law Use: First, in many jurisdictions rights in a trademark can arise from prior use of a mark in commerce. Just because the mark appears available from a search of the Register, the clearance evaluation should encompass a search to identify any prior use for the goods/services of interest. Similarly, use and registration can be precluded if your mark falsely suggests an association or relationship with a third party brand or individual (all those non-Harry and Meghan individuals filing SUSSEX ROYAL trademark applications in the U.S. should take heed).
Family Business: Second, just because a mark contains your name, it doesn’t mean it is available for your use and registration. Prior rights may still be owned by someone else with your same name – or even someone without it. And, marks comprised of a surname alone are not considered inherently distinctive in the U.S., and are not initially registrable on the Principal Register without a showing of acquired distinctiveness.
Restrictions on Certain Kinds of Marks: Third, while it is unclear as to whether the queen could really ban Harry and Meghan from registering the term ROYAL as a trademark in the UK, many jurisdictions do limit registration of certain types of official insignia, such as flags, coats of arms, or other insignia of the United States (TMEP §1204), the Red Cross emblem (TMEP §1205), and others.
Public Relations Considerations: Fourth, as was the case with SUSSEX ROYAL, the optics of a brand may doom it before it gets off the ground. Even with the purest intentions, lack of a coordinated public relations strategy made it appear that Harry and Meghan were perhaps attempting to profit from their royal title.
Linguistics Search: Finally, while perhaps not a concern for SUSSEX ROYAL, brand launches can be kneecapped by a failure to consider a mark’s meaning in other languages; cautionary examples include Chevrolet’s failed South American launch of the NOVA racer (translation: “it will not go”) and Ford’s issues with its PINTO car in Brazil (translation: “tiny male genitals”). In addition, brand owners should consider any negative slang or cultural references relating to a proposed mark.
For trademark owners, a thoughtful trademark strategy allows for a coordinated launch poised to address any public relations issues – familial or otherwise – before investing in a new brand. And for all of the royals, perhaps it is time to consider whether excluding Harry and Meghan from the ROYAL “brand” was the most strategic PR move. Sometimes it is worth the extra effort to make nice with family.
This article appeared in the February 2020 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.