Intellectual Property Attorney Uses Trademark Law to Teach Harry & Meghan a Lesson about Planning
The Daily Mail recently reported that an intellectual property lawyer from Los Angeles has filed for trademark registration of the 'Royal Sussex' brand in the United States so he could “teach Harry and Meghan a valuable lesson about planning.” With stories like these, businesses often wonder if they are doing enough to protect their brands, or if someone else could swoop in and seemingly steal their mark. Keep reading to find out if Harry and Meghan should be worried about their brand.
Can a Brand Be Registered in Different Classes?
A brand can be registered in multiple classes based on the goods or services on which the brand (mark) is used. If there is no reasonable relation between products or services, two seemingly similar or even identical marks could be registered in different classes of goods or services without infringement. For example, I could seek to register "Apple Tires" to sell tires and Apple Computers would likely have a difficult time opposing the registration of such a mark because the average consumer is likely not going to confuse tires with computers or iPads.
In this story, the gentleman filed his application in Class 38 (which covers Telecommunications services) and described his intended services as "communications by computer terminals, transmission, and delivery of video, audio, and data via the internet."
There is likely nothing in that listing of services that would be similar to the types of goods or services contemplated by the Sussexes. I think he would be hard-pressed to argue that the average consumer could confuse a product sold by Harry and Meghan with his alleged "telecommunications" services if he was able to successfully register the mark.
That points to another potential hurdle this individual faces and my second point. In order to fully register a trademark, it must be used in commerce to actually sell a product or service. His application was filed based on an "intent to use" - which means that he is not using it yet, but intends to at some point in the future. The USPTO (Patent and Trademark Office) will not register a mark until it has been used in commerce.
And finally, as the article points out, Harry and Meghan have already filed applications through the World Intellectual Property Organization, seeking protection in their home country of the UK and other countries through the WIPO under the Madrid Protocol. Assuming that their mark successfully registers in the UK, their applications in those other countries (including the United States) will be given priority over any other applications.
Consult With Our Reliable Trademark Lawyers Today
At Cohen Law, A PLC we understand that registering your trademark is a crucial part of protecting your brand and your intellectual property. That is why we are committed to providing clients throughout the greater Los Angeles area with comprehensive legal services. Our legal team has more than 30 years of combined experience in business and intellectual property law and we will gladly use our extensive resources to fight for you.
Are you considering registering your brand? Do you have a mark or logo that needs to be protected? Do you have questions about the trademark process? Please call Cohen Law today at (661) 418-2793 to discuss your situation with an experienced attorney.