Pitfalls of Holiday Specific Branding

The holiday season in the United States starts around Halloween and extends for a two-month period until the beginning of January. The holiday marathon sparks a flurry of purchasing events – such as booking airline tickets, making hotel reservations, planning restaurant outings, and, of course, purchasing gifts. Businesses carefully select trademarks in hopes of attracting the attention of consumers all year long – but especially during this retail bonanza.

Trademark searching statistics confirm an increase in new branding initiatives in the run-up to the holiday season. However, brand owners seeking to create memorable and protectable brands should take care not to overdo it on tying their products or services to a specific holiday. On March 6, 2017, the Trademark Trial and Appeal Board (“Board”) affirmed the PTO’s refusal to register Imaginif, Inc.’s mark KRISMAS, covering retail and online retail toy store services, including featuring holiday merchandise in Class 35, and entertainment services in Class 41, on the grounds that the mark is merely descriptive of a feature or characteristic of the described services.

In the refusal, the Examining Attorney argued that KRISMAS is the phonetic equivalent of “Christmas” and that “Christmas” is merely descriptive of the fact that services, including goods sold in the Applicant’s stores are “Christmas-themed.” Applicant responded by pointing to the purposefully distinct spelling of KRISMAS, stating that the mark is incongruous with the word Christmas because “Applicant provides secular experiences and goods to those not observing the birth of Jesus Christ.”

Courts and the Board have recognized that a slight misspelling of a term will not turn a descriptive word into a nondescriptive mark. See, e.g., In re Quik-Print Copy Shops, 616 F.2d 523, 205 USPQ 505, 507 n.9 (CCPA 1980) (QUIK-PRINT held descriptive; “There is no legally significant difference between ‘quik’ and ‘quick’). Affirming the refusal to register the mark KRISMAS, the Board found that the mark sounds the same as the term “Christmas,” which has both religious and secular meanings and is defined as a Christian holiday in the dictionary. The Board noted the Examining Attorney’s evidence that “the word ‘KRISMAS’ has also found its way into the vernacular, [defined in the Urban Dictionary (see: www.urbandictionary.com)] as a ‘Secular mid-winter holiday celebrating peren[n]ial gift giver Kris Kringle, food, family, gaudy decorations, generosity and goodwill. Essentially Christmas without extraneous religious content.’”

The lesson from this case is that while it can be tempting to incorporate terms that refer to particular holidays into trademarks, such marks can be difficult to protect as proprietary. When selecting new marks, including those directed to a seasonal audience, brand owners should always consider whether any of the terms in the mark immediately provide any information about the goods or services; if so, consider adding additional (distinctive) terms to the mark. Better yet, select marks that merely suggest something about the holiday, versus mentioning it directly. Finally, prior to announcing or promoting a new brand, ask a trademark attorney to review the brand and proposed use. Sometimes the way a mark is used can diminish its brand identifying function.

This article appeared in the November 2017 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.