From Beyoncé to Donald Trump, to Kim Kardashian and Taylor Swift, we have seen a range of trademark filings from celebrities last year. The main goal of trademark registration is to protect businesses from others using their intellectual property in bad faith. Celebrities are no exception, as they are trying to expand their personal brand through trademark protection.
In August 2021, Mariah Carey launched her Black Irish Cream Liqueur. She was, however, barred from selling it on European and UK markets under this name, because of the existence of an identical trademark. Darker Still Spirits Company, located in Dublin, launched its Black Irish whiskey-stout blend in June 2020, more than a year before Carey announced her new venture. The whiskey company successfully acquired the rights to its brand name after filing an application with the relevant IPO office in 2015.
The name Black Irish was important to Mariah Carey because of her heritage, as her mother was of Irish-American origin and her father was "half-Black, half-Venezuelan". Carey's legal team objected to the trademark on the basis that it had "not been put to genuine use within a continuous period of five years" from its original filing in July 2015. Lawyers for Darker Still Spirits Company have successfully refuted these claims with accumulated evidence of test sales and design work completed in 2019. After two long years of disputes, Carey's company has agreed to buy the trademark. Its whiskey-and-stout drink has been renamed 'Born Irish' following the sale. Darker Still Spirits' rebranding to Born Irish in the Americas and Europe will come into effect at the start of summer 2023.
Back in March 2021, Mariah Carey filed a trademark application for "Queen of Christmas", as well as the terms "QOC" and "Princess Christmas" with the USPTO, to receive legal grounds to market herself as the "Queen of Christmas" and sell merchandise with the title. The trademark ownership would have given her the legal rights to stop others from using the seasoned title on music, merch, and other holiday and non-holiday-themed goods and services. However, this trademark application has been criticized by other singers, seen as an attempt to monetize on beloved holidays such as Christmas.
One of the most common tactics that celebrities and companies use to choose a trademark, a company logo or a name, is to center their attention around a specific concept or recognizable word amongst consumers. At the same time, they tend to register assets that the public closely associates with their persona, such as their names, their catchphrases, song lyrics, and even their children’s names. Registration gives the owner the right to bring a trademark infringement claim against anyone who uses an identical or similar sign, in the course of trade, in connection with goods or services that are identical or similar to those for which the trademark is registered.
For a trademark to be eligible for registration, it has to meet certain criteria, one of them being distinctiveness. As the purpose of a trademark is to signal a recognizable source of goods or services to the customer, only a distinctive-enough trademark can achieve this purpose without consumer confusion. Many starting businesses that tried to register their trademarks without prior research have either suffered rejection directly from the trademark office or received opposition from their competitors who registered before them. Trademark law strongly prioritizes companies that filed the trademark application first, even if the registration process was not yet completed. As a result, it is generally advisable to check for the existence of similar trademarks prior to starting with the registration.