Holidays and Intelectual Property

By Gilberto Martínez | 19-Dec-2022

The December festivities are approaching, and as experts in the field of industrial and intellectual property, we are interested in letting you know if it is possible for any individual or corporation to obtain an exclusive protection for words that are widely used during this Holiday time, such as: Santa Claus, Christmas, Hannukah, Merry Christmas, New Year’s Eve, etc. The short answer is NO; however, it is possible to obtain trademark protection for any of these words so long as they are accompanied by additional orthographic, verbal or visual elements that, in combination with the common terms of the Holidays, are distinctive enough to obtain their protection as a Trademark.

In different Trademark Offices around the world, we can find that some individuals and corporations have tried to obtain exclusive rights over the mentioned words. We have been able to confirm that according to the trademark office of the United States of America (USPTO), trademarks such as "Merry Christmas" have been requested to cover products in classes 24 and 25, and obviously denied. Can you imagine that the office would have granted it? That would mean that a piece of clothing bearing the famous Merry Christmas legend could not be used by any third party.

However, it is important to mention, as we stated in the first paragraph of this article, that if such festive elements are combined with any other orthographic, verbal or graphic elements that brings distinctiveness to the trademark, it is possible to obtain their registration. Some examples of brands that are currently registered in various trademark offices around the world are: “Santa Claus is coming to town”, “A Christmas Story” and “All I want for Christmas is you ”, which, as you can see, include commonly used terms such as Sant Claus and Christmas, but the elements that accompany these words are what make them distinctive and therefore viable for registration.

Nowadays, merchants must also be careful with the festive terms they use, because some could be considered by them as terms of common use, when in some cases, they are registered as trademarks. An example we found: The town of Louisville, Kentucky had planned a Christmas display based on the story “How the Grinch Stole Christmas”, complete with an area called "LouWhoVille," and costumed characters such as Cindy Lou Who and the Grinch.   Apparently, the city was unaware that the Grinch, Cindy Lou Who, and rest of the fair citizens of Who-ville are all protected intellectual property owned by Dr. Seuss Enterprises.

The Town of Louisville were unaware of the Grinch’s copyright protection until they were contacted by the legal representatives of Dr. Seuss Enterprises, where they were informed that the terms "Grinch” and “Cindy Lou Who" were registered as trademarks and copyright, and therefore they were forced to cancel the show.

There are also many companies who are very active in trying to find infringers during the holiday season. In some countries, merchants sell toys and merchandising that are not created by the owner or holder of the IP rights. Intellectual property Law Firms are very busy during this time of the year working against infringers that are violating the Ip rights of some companies around the world. Companies like Mattel, Hasbro and Dr. Seuss, are known to send cease and desist letters to possible infringers while initiating infringement actions against such companies at the same time.

To conclude, despite there being many trademarks registered that include festive terms with additional elements that grant distinctiveness to their rights, it’s important that if you want to use any of the common terms used during the holiday season, to first check and confirm if you are entitled to use these terms for being free of protection and for the use of any individual or any corporation.

Finally, we wish you have the Merriest of Holidays and a Happy New Year’s full of health, love, peace and success.

Gilberto Martínez
Managing Partner |
Intellectual Property Law, Commercialization of Intellectual Property, Trademark Prosecution and Consulting, Domain Names, Copyright Law
Gilberto Martínez is one of the co-founding and managing partners of Iberbrand®. He leads the Firm’s Trademark and Copyright Department with more than twenty years of experience in his practice.
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