Putting the ® in Rudolph (and Other Holiday Trademarks): Safeguarding your Seasonal Brands
Posted on Dec 23, 2020 in Article
It’s the holiday season, and, even in pandemic times, retail is at an annual high. As a result, many businesses have released seasonal goods—from festive drinks to holiday attire—to embrace the cold winter months and facilitate sizable revenue returns. However, for goods and services that may only be offered for a few months out of the year, many business owners wonder—is intellectual property protection worth the investment?
The retail space is no stranger to festive holiday marks. Certain marks are known world-wide, such as RUDOLPH THE RED-NOSED REINDEER®. Yet, aside from the more obvious marks, seasonal marks extend much further than television specials. For example, the mark MAD ELF® refers to Troegs Brewing Company’s annual small-batch holiday ale, and the name is one of many factors contributing to the drink’s ability to sell out year after year. The registration for DREIDEL DASH® is listed for entertainment services, namely Jewish community-building activities including foot races and Hanukkah celebrations. Other trademarks, such as THE ELF ON THE SHELF® refer to the highly popular set of children’s books and plush elves designed to teach children about Christmas traditions. Finally, SPIRIT OF KWANZAA® is registered for community outreach programs centered around getting local youth involved in dance.
Seasonal marks are not just limited to specific winter holidays. In fact, certain goods and services, particularly those in the food and drink industry, may cover much larger marketing periods. For example, Registration Nos. 4839155 for WINTER CHEERS® and 4085468 for SUMMER SHANDY® relate to seasonal drinks that are typically enjoyed for multiple months out of the year.
While seasonal goods and services enable others to enjoy a special time of year in new ways, they also provide multiple factors for brand owners to consider. Acquiring a trademark for a seasonal brand enables registrants to signify to consumers the quality and consistency of their product. Registrations also help prevent other brands from selling confusingly similar goods designed to profit off of a trademark registrant’s success. Not only does a federal trademark provide these brand owners with a path of recourse if unfair competition does occur, but the mark’s appearance on the Principal Register discourages those in the early branding stages from choosing confusingly similar marks in the first place. Although some brands may only appear in stores for a few months annually, registering trademarks in those brands significantly aids in protecting their commercial impact year after year.
When selecting or thinking about protection for a seasonal mark, there are a few factors trademark applicants should consider. First, a United States Patent and Trademark Office (USPTO) Examining Attorney is more likely to refuse to register a mark as being merely descriptive when the name of a holiday—or its phonetic equivalent–explicitly appears in the mark. As an example, trademark Application Serial No. 86420607 for KRISMAS was refused on the basis that “the proposed mark merely describes the subject matter, features and characteristics of applicant’s services[,]” as the examining attorney found the mark KRISMAS to be the mere phonetic equivalent of “Christmas.” However, when the mark contains other distinctive features, it is more likely to be registerable. The mark “BRIGHT” BEFORE CHRISTMAS, for example, was successfully registered for “organization of events for cultural purposes.”
While care should be taken in determining the content of any mark, applicants considering a holiday mark should also reflect on external factors besides registrability, including cultural awareness. In 2013, Disney filed an application for DIA DES LOS MUERTOS to promote its animated feature inspired by the Mexican holiday. However, the trademark application was abandoned a mere six days later after public disapproval over Disney’s attempt to trademark a Mexican cultural tradition focused on honoring ancestors.
Overall, with the proper considerations taken, a seasonal mark can serve as a fun and festive way to market goods and services to consumers. While applicants should consider marketability, registrability—including descriptiveness—and cultural sensitivity, state and federal trademark protection can be a prudent solution to protecting brands that have come to be a part of our most memorable traditions. For more information on trademarks, please visit https://www.caesar.law/practices/trademarks/.
 Registration No. 1309723 (issued Dec. 18, 1984).
 Registration No. 3035721 (issued Dec. 27, 2005).
 Registration No. 4623954 (issued Oct. 21, 2014).
 Registration No. 3533459 (issued Nov. 18, 2008).
 Registration No. 2538355 (issued Feb. 12, 2002).
 Registration No. 4839155 (issued Oct. 27, 2015); Registration No. 4085468 (issued Jan. 10, 2012).
 Examining Attorney’s Appeal Brief, Application Serial No. 86420607 (Dec. 21, 2016); see also Lauriel F. Dalier, Pittfalls of Holiday Specific Branding, 10 Nat. L. Rev. 356 (Nov. 29, 2017).
 See TMEP 1209.01, Distinctiveness/Descriptiveness Continuum, Trademark Manual of Examining Procedure.
 Registration No. 6074962 (issued June 9, 2020).
 Application Serial No. 85920880 (May 1, 2013).
 Id.; see also Adolfo Flores, Disney Withdraws Trademark Filing for ‘Dia Des Los Muertos,’ L.A. Times (May 8, 2013).