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Battle of the Queens: Mariah Carey’s Trademark Troubles

October 17, 2022 In Blog, Celebrity, Intellectual Property, Music, Trademark By Sarah Elizabeth Sanchez Velilla

Battle of the Queens: Mariah Carey’s Trademark Troubles

It is almost that time of the year again when “All I Want for Christmas Is You” by Mariah Carey plays, at least once, during the holiday season. For many of us, it is a Christmas “classic,” an inevitable anthem that one cannot help but sing along to. Maybe that is why, even after eighteen years since its release, it still ranks No. 1 on the charts.[1] But it looks like a singing career is not the only thing that Mariah Carey wants to be known for.

With her persistent fame, Mariah Carey now not only wants to be associated with her Christmas carols, but also seeks to leave her mark on an extensive range of products. Mariah Carey, through her “Lotion LLC” company, has made her way to the Patent and Trademark Office to register the terms “QUEEN OF CHRISTMAS,”[2] “QOC,”[3] “PRINCESS CHRISTMAS,”[4] and “CHRISTMAS PRINCESS.”[5] For each of these marks, she intends to cover numerous different goods and services, including fragrances, sanitary masks, jewelry, clothing, and, of course, music.[6]

However, not everything in the world of Trademarks is “holly jolly” for Mariah Carey. Amongst her registration applications, one, in particular, has caused some conflict. On July 12, 2022, the Trademark Official Gazette made public Mariah Carey’s trademark application for “QUEEN OF CHRISTMAS.”[7] After the publication, some criticized her attempts to take over such a name; others went even further and opposed her registration.

The famous Darlene Love, most well-known for her song “Christmas (Baby Please Come Home),” was quick to disapprove of Mariah Carey’s attempts to claim “Queen of Christmas” as her own.[8] Darlene Love asserted that David Letterman officially declared her the “Queen of Christmas” – even before Mariah Carey released “All I Want for Christmas Is You” – and that she has no intentions to stop using it.[9] However, her discontent with Mariah Carey’s intentions stop there; she has not filed any formal opposition to the “QUEEN OF CHRISTMAS” registration.

On the other hand, Elizabeth Chan, a famous full-time Christmas-song singer and composer, [10] has also voiced her concerns, but in doing so, she had her counsel file an opposition (the “Opposition”) to the registration on the grounds that the likeliness of confusion and false association will cause her damage.[11] The Opposition remarks that Mariah Carey is not the only one associated with the “Queen of Christmas.” Instead, several recording artists have been labeled with that term, including Elizabeth Chan,[12] who has been referred to as the “Queen of Christmas” by The New Yorker magazine.[13] But even after being coined the “Queen of Christmas,” Chan does not believe that the name should belong exclusively to her or exclusively to anyone for that matter.[14] Hence, the Opposition claims that the Trademark Office should not grant the registration and should not allow for Lotion, LLC to control the mark because, if it did and the registration were to be granted, it would lead consumers to confusion and Elizabeth Chan would be damaged.[15]

Likelihood of Confusion

The first assertion brought forward by Elizabeth Chan’s team was the likelihood of confusion.[16] Under this factor, a mark upon which registration is sought cannot resemble a mark that has been previously registered in the Patent and Trademark Office or used in the United States; if so, registration shall not be permitted.[17]

Elizabeth Chan has used “Queen of Christmas” on numerous occasions. She has exclusively released Christmas music and products relating to music,[18] has used the brand in commerce for goods and services,[19], and has been dubbed the “Queen of Christmas” by media and her advertising and promotional campaigns.[20] Chan argues, all of this, as a whole, has created a “Queen of Christmas” persona for Elizabeth Chan, which is recognizable and of value to her reputation.[21] Moreover, the Opposition claims that Mariah Carey’s application targets all ordinary consumers of goods and services, including those of Elizabeth Chan, and travel in all ordinary trade channels, including those that Elizabeth Chan uses to sell her goods and services.[22]

As such, the Opposition stipulates that the “Queen of Christmas” brand, when used for the goods and services that Mariah Carey wishes it to be used for, would likely cause confusion, mistake, or deception because of the reputation that Elizabeth Chan, as the “Queen of Christmas,” has built. Additionally, the Opposition alleges that not only will it damage Elizabeth Chan and her company, but it will also be a source of confusion to her consumers who trust her reputation.[23] For these reasons, the Opposition finalizes, the registration of “QUEEN OF CHRISTMAS” should not be granted.[24]

False Association

The second allegation made in the Opposition was the creation of false association.[25] Under this criteria, a registration shall be refused if it falsely suggests a connection with a person.[26] Much like the arguments of likelihood of confusion, the false association claims brought forward by the Opposition illustrate that the mark falsely suggests a connection with Elizabeth Chan.[27]The Opposition argues the name used to refer Elizabeth Chan (“Queen of Christmas”) and the mark sought to register (“QUEEN OF CHRISTMAS”) are identical, and the mark unmistakably points to Elizabeth Chan.[28]

Mariah Carey’s Next Steps

Once a Notice for Opposition is issued, the Applicant must file their answer within the time initially set, and in the absence of such an answer, a Notice of Default will be issued.[29] For Mariah Carey, this meant she should have submitted her answer 40 days from when the Notice of Opposition was filed: the Opposition was filed on August 11, 2022, meaning that her answer was due on September 20, 2022.[30] However, an answer was never submitted and, as a consequence, the Trademark Trial and Appeal Board entered a Notice of Default. This Default entails that the proceedings are suspended for thirty days as of October 1, 2022, and grants Mariah Carey time to show why a default judgment should not be entered against her.[31] Failure to do so will render the application for “QUEEN OF CHRISTMAS” abandoned.

Conclusion

Although there are registrations for terms like the one Mariah Carey is attempting to register – in connection with people[32] and in relation to holidays,[33] – the odds are not likely in her favor. There is much more to obtaining registration for a mark than simply submitting the application, especially when opposition arises. And, by the looks of it, Elizabeth Chan has made some persuasive arguments concerning the likelihood of confusion and false association, potentially even persuading Mariah Carey to abandon the registration. Time will tell whether Mariah Carey and her team are up for the battle of the queens.

Footnotes[+]

Sarah Elizabeth Sanchez Velilla

Sarah Elizabeth Sanchez Velilla is an Intellectual Property LLM candidate (’23) at Fordham University School of Law and a staff member of the Intellectual Property, Media & Entertainment Law Journal. She holds a dual BB.A. and LL.B. from IE University, an LLM from VIU, and is a lawyer in Spain. Besides being a passionate artist herself, she has IP experience through research and practice.