August 15, 2018

August 15, 2018

Subscribe to Latest Legal News and Analysis

August 14, 2018

Subscribe to Latest Legal News and Analysis

August 13, 2018

Subscribe to Latest Legal News and Analysis

Pitfalls of Holiday Specific Branding

The holiday season in the United States starts around Halloween and extends for a two-month period until the beginning of January. The holiday marathon sparks a flurry of purchasing events – such as booking airline tickets, making hotel reservations, planning restaurant outings, and, of course, purchasing gifts. Businesses carefully select trademarks in hopes of attracting the attention of consumers all year long – but especially during this retail bonanza.

Trademark searching statistics confirm an increase in new branding initiatives in the run-up to the holiday season. However, brand owners seeking to create memorable and protectable brands should take care not to overdo it on tying their products or services to a specific holiday. On March 6, 2017, the Trademark Trial and Appeal Board (“Board”) affirmed the PTO’s refusal to register Imaginif, Inc.’s mark KRISMAS, covering retail and online retail toy store services, including featuring holiday merchandise in Class 35, and entertainment services in Class 41, on the grounds that the mark is merely descriptive of a feature or characteristic of the described services.

In the refusal, the Examining Attorney argued that KRISMAS is the phonetic equivalent of “Christmas” and that “Christmas” is merely descriptive of the fact that services, including goods sold in the Applicant’s stores are “Christmas-themed.” Applicant responded by pointing to the purposefully distinct spelling of KRISMAS, stating that the mark is incongruous with the word Christmas because “Applicant provides secular experiences and goods to those not observing the birth of Jesus Christ.”

Courts and the Board have recognized that a slight misspelling of a term will not turn a descriptive word into a nondescriptive mark. See, e.g., In re Quik-Print Copy Shops, 616 F.2d 523, 205 USPQ 505, 507 n.9 (CCPA 1980) (QUIK-PRINT held descriptive; “There is no legally significant difference between ‘quik’ and ‘quick’). Affirming the refusal to register the mark KRISMAS, the Board found that the mark sounds the same as the term “Christmas,” which has both religious and secular meanings and is defined as a Christian holiday in the dictionary. The Board noted the Examining Attorney’s evidence that “the word ‘KRISMAS’ has also found its way into the vernacular, [defined in the Urban Dictionary (see: www.urbanddictionary.com)] as a ‘Secular mid-winter holiday celebrating peren[n]ial gift giver Kris Kringle, food, family, gaudy decorations, generosity and goodwill. Essentially Christmas without extraneous religious content.’”

The lesson from this case is that while it can be tempting to incorporate terms that refer to particular holidays into trademarks, such marks can be difficult to protect as proprietary. When selecting new marks, including those directed to a seasonal audience, brand owners should always consider whether any of the terms in the mark immediately provide any information about the goods or services; if so, consider adding additional (distinctive) terms to the mark. Better yet, select marks that merely suggest something about the holiday, versus mentioning it directly. Finally, prior to announcing or promoting a new brand, ask a trademark attorney to review the brand and proposed use. Sometimes the way a mark is used can diminish its brand identifying function.

© 2018 Sterne Kessler

TRENDING LEGAL ANALYSIS


About this Author

Associate

Ms. Dalier is an associate in the Trademark, Advertising, and Anti-Counterfeiting Practice.  She focuses her practice on trademark portfolio management, prosecution, and matters before the Trademark Trial and Appeal Board. She counsels clients on mark selection, clearance, and on the creation and maintenance of trademark rights worldwide.  She conducts due diligence reviews of intellectual property assets, and works with clients on domain name monitoring and trademark enforcement. With more than ten years of experience in trademark law, she is well versed in all aspects...

202.772.8633
Monica Riva Talley, Trademark Attorney, Sterne Kessler, Law Firm
Director

Monica Talley brings more than 17 years of experience protecting some of the world's most recognizable brands to her role as a Director in the firm’s Trademark practice.  Ms. Talley specializes in strategic trademark counseling and portfolio management, developing anti-counterfeiting solutions and strategies, and trademark enforcement. 

Ranked as one of the leading trademark prosecution and strategy attorneys in Washington, DC, Ms. Talley is particularly noted for her global brand protection and commercialization strategies, and is lauded by clients for utilizing “her broad IP savvy to procure fantastic short and long-term results” (World Trademark Review 1000, 2012 and 2013).

202-772-8688