Trade marks are like other intellectual property assets: they bring undisputed value to a business’ success. Celebrities, and the businesses behind them, are no different.
Like other businesses, celebrities seek to register trade marks to commercially exploit signs that are associated with them, and to prevent others from using or misusing these. Most recently, we’ve seen Mariah Carey’s attempts to register protection for QUEEN OF CHRISTMAS, QOC and PRINCESS CHRISTMAS denied by the US registry.
WHAT MAKES A SUCCESSFUL CELEBRITY TRADE MARK APPLICATION AND WHY DO SOME FAIL?
Personalities ranging from actors, singers and athletes routinely seek trade mark registrations, not only for their names but also for other signs that they believe are identified with them.
Some of these are rather unusual and attract much media attention. For example, Taylor Swift sought registration for the name of her three cats, Cardi B tried (without success) to register her catch phrase “Okurrr” and NFL player Tim Tebow registered his signature pose “Tebowing” (described as ‘going down on one knee whilst holding a clenched fist to the forehead’).
However, when it comes to registering their brands, not all publicity is good publicity!
Sometimes it is better to say less rather than more. For example, Beyonce and Jay Z sought to register the name of their daughter, Blue Ivy Carter when she was born, despite Jay Z publicly admitting in an interview (presumably to avoid possible backlash) that they did not intend to monetise their daughter’s name. He said he merely wished to prevent others from profiting from it.
What he may have missed is there are significant validity implications for a trade mark registration where there is no intention to use the mark.
Celebrities, like most other businesses (and especially those that do not seek appropriate legal advice prior to seeking trade mark protection), often encounter issues when seeking trade mark registration or when using their brands.
One recent example is a trade mark infringement case involving model Hailey Bieber.
Bieber was sued after launching a skincare line called RHODE (named after her and her mother’s middle name), by a clothing company with the same name. The preliminary injunction requested by the clothing company sought to stop Hailey’s use of the mark. Although the preliminary injunction was denied, it remains to be seen which party will succeed at trial (unless the matter is settled, like many celebrity cases are).
The most recent - and the most topical example - is the rejection of Mariah Carey’s US trade mark applications for “Queen of Christmas”, ”QOC”, and “Princess Christmas”, following oppositions filed by a fellow musician, Elizabeth Chan.
Chan was also dubbed the “Queen of Christmas” and accused the “All I Want For Christmas Is You” singer of attempting to monopolise and monetise the word “Christmas”.
Carey did not respond to the oppositions, which led to the rejection of her trade mark applications. Had Carey not adopted a “file first, think later” strategy she might have avoided the negative publicity that followed.
Some celebrities seem to be confident that their applications will proceed to registration due to the notoriety of their marks. Paradoxically though, the level of fame can sometimes impede registration, particularly if consumers are likely to perceive the mark as a mere description of the subject matter of the goods and services concerned, rather than their commercial origin.
For example, trade mark applications for DIANA, PRINCESS OF WALES were refused registration in the UK, on the basis that consumers would not perceive goods such as merchandising and memorabilia bearing the name to be provided exclusively under the control of a single undertaking. In other words, consumers would purchase such goods due to the image carried by the names rather than because they originate from a particular undertaking.
This is why prior to seeking trade mark protection or adopting a new brand, celebrities, like all other businesses, should seek professional guidance, to ensure that their mark is registrable and available to use and register. This could not only avoid costs wasted in defending objections and legal actions but could also prevent the negative publicity that almost undoubtedly follows after a celebrity mishandles the trade mark registration process.
An example that emphasises the type of backlash that can follow a poor trade mark strategy is Kim Kardashian’s attempt to register the word “Kimono” in relation to shapewear (among other items).
The name was intended to be a play on Kim’s name, in line with her other brand names, and to purportedly acknowledge the effort that goes into the garment’s creation.
However, after being widely accused online of culture appropriation, Kardashian changed the name to SKIMS (a word play between “Kim” and “skin/s”). Had she sought appropriate professional guidance, Kim Kardashian would have been warned that her proposed name may cause controversy.
It is not all doom and gloom when it comes to celebrity trade marks, however. One success story was the ring announcer Michael Buffer’s trade mark registration for his famous catchphrase “Let’s get ready to rumble!”.
It is said that the exploitation of this mark, particularly from licensing the rights for use in relation to movies, TV shows, video games and merchandise, has earned Buffer over $400 million (more than £325 million). This goes to show that a good trade mark strategy can significantly increase the value of a business, celebrity or otherwise!
WHAT HAS THIS TAUGHT US ABOUT CELEBRITY TRADE MARKS?
All businesses, whether backed by celebrities or not, should try to seek appropriate professional guidance prior to seeking trade mark registration and adopting a new brand, in order to avoid possible legal actions and negative publicity.