All I want for Christmas is a trademark: Considerations for entertainers

At the top of every Christmas tree, there can only be one star… at least that's what Mariah Carey thought when her company, Lotion LLC, sought to register a trademark for "QUEEN OF CHRISTMAS" in the US. As it turns out, not everyone agreed with Carey's claim to the holiday throne.

Earlier this year, singer Elizabeth Chan initiated a formal opposition proceeding against Carey's application, taking issue with Carey's attempt to "claim sole ownership of the title" to the phrase. Carey's team filed multiple motions for extensions of time but failed to file a response to Chan's opposition. Ultimately, the Trademark Trial and Appeal Board dismissed the application due to a failure to respond.

While we cannot say with certainty whether Chan's substantive arguments in opposition would have been successful, this case raises some interesting questions: What kinds of trademarks can entertainers file for? What should entertainers keep in mind before filing a trademark application?

Santa Claus or Saint Nicholas? Stage names vs given names

A trademark registration provides the owner with the exclusive use of the mark in association with the registered goods or services, including the ability to license that mark to others.

As an entertainer, your name is often your brand. However, Canadian trademark law treats coined fictitious stage names, such as "Lady Gaga," more favourably than performers' real names, such as "Stefani Germanotta." This is a result of paragraph 12(1)(a) of the Trademarks Act ("Act") which stipulates that a trademark is not registrable if it is "a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years." ^[1]

The two-pronged test under paragraph 12(1)(a) can be summarized as follows: Is the trademark a name or surname of an individual who is living or has died within the preceding thirty years (evidence of even just one person having the name is sufficient to meet this first part of the test)? If the answer is no, the trademark is not in violation of 12(1)(a). If the answer is yes, the Registrar must ask if, in the mind of the average Canadian consumer, the trademark is primarily merely a name or surname.^[2]

If, from the perspective of the average Canadian of ordinary intelligence and education in English or French, the name has another significance separate from the name (e.g. the word has a dictionary meaning) and that meaning is equal to or greater than any significance of the mark as a name, it cannot be said that the trademark is "primarily merely" a name. A good example of this would be the common last name and English word, "baker."

Distinctiveness pays off (just ask Rudolph)

Even if an entertainer is unable to successfully argue against a paragraph 12(1)(a) objection, sufficiently well-known individuals are likely in the clear if they can establish that their name has acquired distinctiveness for the applied-for goods or services For example, TAYLOR SWIFT in Canada is registered for use in association with live musical performances.^[3] Further, one is more likely to overcome a name objection by combining the name with other distinctive words or design elements.

If the entertainer is able to establish goodwill in their name (i.e. the value and the reputation it carries among the public), they can also enforce their common law rights in their name without a registered trademark. However, a federal trademark registration provides a national scope of protection, while common law rights are limited geographically, extending only to areas where a reputation has been established. There are also differences in the enforcement options available to an entertainer holding a registered trademark versus one with common law rights only.

You can't always get what you want…

Okay, so you can't get the Red Ryder BB Gun, but it doesn't mean you have to settle for the pink bunny suit. While you may not be able to trademark your name, artists should consider applying for a good old-fashioned slogan, catchphrase or logo.

A trademark, in brief, is a sign or combination of signs used for the purpose of distinguishing the goods or services of one source from those of others. Thus, entertainers may seek protection for an array of different types of trademarks (e.g. distinctive designs/logos, stylized words/letters, slogans, phrases) that represent their personal brand rather than trademarking their actual name. In general, if a mark is distinctive of the entertainer/applicant for the specific goods or services that are listed in the trademark application, the mark is suitable for registration.

Another consideration to keep in mind is that words describing an inherent feature or character of its associated goods or services may not be registered. Words or phrases that laud the worth or importance of a good or service, such as "WONDERFUL," "TERRIFIC," or "WORLD'S BEST," could render a trademark not registrable as these words are not considered to be inherently distinctive.^[4] For instance, a local hobby singer attempting to trademark "Best Christmas Singer in the World" for use in association with recorded holiday music will likely be a no-go through the eyes of the Canadian Intellectual Property Office. But if Mariah Carey—the distinct voice behind the worldwide holiday hit, "All I Want For Christmas Is You"—applied for the exact same trademark, she would have a much better case from an acquired distinctiveness standpoint.

Unless you are confident that you can establish the acquired distinctiveness of a laudatory word/phrase, it may be best to stay away from boastful terms altogether.

Protecting trademarks in the entertainment industry involves complex and nuanced issues and considerations. So while you can't always get what you want, if you seek legal advice, well, you might find you get what you need.

Should you have any specific questions about this article or would like to discuss it further, you can contact the authors or a member of our Entertainment & Sports Law Group.