Trademarking The World’s Famous Events
On 21 September 2019, over six million people descended on Munich to attend Oktoberfest, 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 around the globe.
Oktoberfest and Wiesn
Munich has made multiple attempts to trademark the term ‘Oktoberfest’ and had no success. The German Patent and Trademark Office has rejected filings for Oktoberfest on the ground the term is a purely descriptive indication, therefore, needs to be kept free as a word pursuant to § 8 (2) No. 2 MarkenG. However, Wiesn has enjoyed trademark protection as a European world 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.
Although Munich is having little success in trademarking the term Oktoberfest, other famous event names and logos have been well and truly locked down. For example, Fédération Internationale de Football Association (FIFA) has EUIPO trademarks in almost every class. The organization also has trademarks on WORLD CUP 2018 and RUSSIA 2018. Furthermore, according to their brand protection information, FIFA’s Commercial Affiliates will only invest in the FIFA World Cup if they are provided with exclusive rights to use the marks.
Thanksgiving in New York would not be complete without the traditional Macy’s Thanksgiving Day Parade. Since 1998, Macy’s has had a federal trademark registration for the phrase ‘Macy’s Thanksgiving Day Parade’ for entertainment services, specifically organizing and conducting a parade.
Augusta National, Inc holds several trademarks related to one of the world’s four great golf tournaments, the American Masters. The classes protected are 25 (footwear, headwear, and clothing), 28 (golf-related goods), and 41 (golf tournaments, courses, instruction, and entertainment services).
Not every sport-related trademark application is successful. In September 2019, Liverpool Football Club (LFC) had its application to trademark the word ‘Liverpool’ rejected by the UK Intellectual Property Office. Although the Premier Football Club insisted its sole aim was to protect themselves against mass-produced Liverpool FC merchandise, there was a furore of objections amongst independent shop owners, the City Council, and residents.
The Club’s CEO, Peter Moore, told the Liverpool Echo
"We underestimated the reaction to it." We had, in very good faith, looked at what we were seeing on a global basis and particularly stuff that was coming into the UK.
We felt obliged to protect the football club and had looked at other similar situations for clubs that had trademarked their place names in a football context, there are numerous examples.
We felt that on behalf of the club we needed to do that, but I think it's fair to say that we underestimated the emotional reaction to it and that's our bad."
St. Patrick’s Day
Finally, one of the world’s favorite days – St Patrick’s Day is celebrated all over the world, from Dublin to Dallas and from Cork to Chicago. The Romano-British saint who legend has it was captured by pirates and spent his first six years in the emerald isles as a slave, is the subject of many trademarks. These include ‘St Patrick’s Irish Pub’ and ‘St Patricks College’.
Certain St Patrick’s Day festivals are also registered USPTO trademarks; for example, The St Patrick’s Day Parade, Inc has trademarked “The St. Patrick’s Day Parade And Celebration Committee” under class 41 (organising events for cultural purposes). And for the sober curious, there is a trademarked Sober St. Patrick’s Day.
Trademarks linked to famous events allow organizers and creators to protect their brand and stop others from selling unauthorised merchandise. Trademarks also benefit commercial affiliates to global events. As FIFA points out, “If anyone could use the Official Marks for free and create an association with the FIFA World Cup™, there would be no reason to become a Commercial Affiliate. This would mean that FIFA could not appoint any Commercial Affiliates and would therefore not receive the revenue required to maintain the high standards expected of the FIFA World Cup™”.
Given the importance of trademarks in large events, it is highly likely the City of Munich has no plans to give up its quest to protect Oktoberfest.
We’ll drink to that.
Running a comprehensive trademark search is the best way to mitigate a trademark infringement risk when moving forward with a particular mark. As well as providing a detailed review of PTO trademark data, our scope includes common law data sources, global company data, pharma-in-use data, the main app store aggregators, social media results and domain availability, litigiousness assessment, semantic similarity reporting, brand strength and word meaning tools. It is a complete solution to the heavy lifting challenges of trademark clearance found on one platform.
Investing in the right tools to run either a knockout search or a comprehensive trademark search benefits both attorneys and businesses. Both parties can be confident in the final opinion produced.
Given the investment required to launch a new event, or product in the digital age, when it comes to accurate trademark searches, the old adage: “an ounce of prevention is worth a pound of cure” applies perfectly.