Holiday Trademarks – Trick or Treat?

Illiana Soto and Lisa Wright,

Halloween is fast approaching and can be big business for brand owners. According to the National Retail Federation’s Annual Survey, in the United States alone, $2.6 billion is spent annually on candy and popcorn, but additional Halloween purchases for costumes, decorations, and other products bring the total spend to over $8.8 billion.

Why trademark a holiday name?

Given this commercial background, it is not surprising that trademarks for goods and services linked to holidays such as Halloween are in demand.

Under trademark law, it is possible to trademark any holiday name if you use that name to sell or promote your goods or services - so long as it is distinctive for the relevant consumer. 

For holiday names, it can be tricky to attain the required level of distinctiveness in Nice Classes, as evidenced here by rejected applications in Classes 41 (Education and Entertainment) and 25 (Clothing) for the word mark MERRY CHRISTMAS:

invalid applications for classes 25 & 41-01

In order to avoid being rejected by a Trademark Office on absolute grounds of refusal at the outset of a trademark application process, it is essential to run knockout searches and similarity searches to ensure, among other factors, that your trademark is treated as distinctive and not merely descriptive by the registry of your choice.

Oktoberfest

In addition to Halloween, another popular (and profitable) event that occurs every Autumn is the international beer festival Oktoberfest. Although Oktoberfest 2020 will not take place this year due to the global pandemic, last year, on 21 September 2019, over six million people descended on Munich to attend the world’s largest Volksfest (beer festival and travelling funfair). Oktoberfest is also known as Wiesn, the common name for fairgrounds. Part of Bavarian culture since 1810, Oktoberfest is a term known and marked around the globe.

The City of Munich has made multiple attempts to trademark the term ‘Oktoberfest’, and finally had success on 26 August 2020. The city was successful with its appeal against a ruling of the European Union Intellectual Property Office (EUIPO) from 2019, where the EUIPO had dismissed the request of the Bavarian capital in the first instance.

EUIPO Board of Appeal ruling

The trademark is now valid in Classes 3, 4, 6, 9, 14, 16, 18, 21, 24, 25, 26, 28, 31, 34, 35, 38, 39 and 45 and in respect of ‘Hotel services; Hiring of carpentry and boarding house; Accommodation reservations and reservations for accommodation’ in Class 43. 

Additionally, the city of Munich can now ask manufacturers of relevant goods (which use the trademark) to pay royalties. It can even stop the use of the mark on certain goods or services. The office has rejected trademark protection for beer, other drinks, and food, however. It is still also not possible to prohibit other Oktoberfests from taking place in other locations around the world.

Wiesn

Conversely, Wiesn has enjoyed trademark protection as a European word mark since 2012. Hans Segmüller Polstermöbelfabrik GmbH & Co. KG, a South German Retail Company, has protected Wiesn under Classes 11, 20, and 35.  

Wiesn has also been protected by the City of Munich since 2015 under classes 9, 38, 39, and 42.

Halloween trademark activity

There is a frightening number of marks containing the text HALLOWEEN, with over 740 valid registrations - but who knew the event was so big in Japan? The JPO takes top registry with 20.9% of valid marks filed, followed by the USPTO (14.7%), and Chile’s INAPI (6.5%).

Top product descriptions

With plenty of treats like sweets, candy, and chewing gum to be had on the night, it is no surprise that the top product description - Sweets (candy), candy bars and chewing gum (12.4%)  -  is found in Nice Class 30 (Staple Foods).

Top owners

Carozzi SA (Chile) and Sanrio Co Ltd of Japan share the top spot with the largest number of trademarks (5.1%), followed by Spanish company Perfumes y Diseño Comercial, SL (2.7%).

Trademarked treats

Let’s take a look at three popular candies that feature in our trick-or-treat buckets at this time of the year and unwrap their trademark activity too! 

1. Haribo 

With over 740 valid trademarks containing the mark text HARIBO it is interesting to note that the Danes appear to be most fond of these! The top registry is Denmark’s PVS (12.2%), closely followed by Germany’ DPNA (11.2%) and France’s INPI (6.3%). It is no shock that the top product description by far is found in Class 30: Sweets (candy), candy bars and chewing gum (59.9%).

2. Reese’s Peanut Butter Cups 

The pumpkin orange packaging of Reese’s Peanut Butter Cups ensures they are a popular choice at Halloween. At the time of writing, the American confectionery giant Hershey owns more than 25 valid trademarks containing the mark text REESE’S PEANUT BUTTER CUP. China’s CNIPA is the top registry with a ratio of 26.9%, followed by the United States’ USPTO (19.2%) and South Korea’s KIPO (15.4%). Once more the top product description is Sweets (candy), candy bars and chewing gum (61.5%) and found in Class 30.

3. Butterfinger 

The owners of this popular Halloween treat certainly don’t have butter fingers when it comes to protecting their IP. At the time of writing, Ferrero International, SA owns 20 valid trademarks containing the mark text BUTTERFINGER, with its acquisition of Nestlé giving it an additional 10 valid marks. It seems that sharing is caring when it comes to this candy as the top registries are Columbia’s SIC, Jordan’s MIT, the Philippines’ POPHL, and Paraguay’s DINAPI – all holding 2 valid marks each. The top product description is found in Class 30: Chocolate (50%).

Final thoughts

Whether it’s for the holidays or any other time of year, protecting your trademarks through registration is just the first part of your trademark strategy. Maintaining and monitoring your trademarks against potentially infringing applications and improper use by third parties is crucial in today’s “always on” digital world.

The holiday shopping season, however, has become the most important period in eCommerce. And, with many more businesses now also moving online due to the global pandemic, brand owners can find themselves unprepared for the significant spikes in counterfeits and rights infringements that also sadly occur during these events. 

If you would like to learn more about how to protect your brand and customers from holiday counterfeits, Corsearch has a Halloween treat for you now - our new eBook guide “Seize The Season”!

Don’t let counterfeiters trick your customers this Holiday Season!

GET TREAT!

By Illiana Soto and Lisa Wright
Illiana Soto is a Customer Success Manager at TrademarkNow. Her primary role is to maintain customer relationships as well as onboarding new clients, providing training calls and giving insights on client-to-business interactions. She holds a BA in Mathematics from Rowan University with a minor in Education. She writes regularly for the blog and enjoys travelling and watching baseball! Lisa Wright, Content Writer at TrademarkNow, is a graduate of the University of Law. She researches and publishes books, articles, and webinars on global IP law and trademark activity.

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