When technology startups and entrepreneurs begin to think about trademark rights protection and brand registration in the United States Patent and Trademark Office (USPTO), or in other countries including the United Kingdom and European Union, ownership and prior use issues as who owns the brand may arise. This legal conundrum facing brand owners seeking to protect their trademark rights in an international market is among many faced by The Duke and Duchess of Sussex who are seeking to register the trademark SUSSEX ROYAL across a broad category of goods and services in the European Union, Canada, and United States, by way of filings through the World Intellectual Property Organization (WIPO).
SUSSEX ROYAL TRADEMARK RIGHTS
The former royals have alluded to their commercial plans through their filings and through their new official website at SussexRoyal.com.
As of February 3, 2020, a search of USPTO’s trademark database (Trademark Electronic Search System, or TESS) for “SUSSEX ROYAL” produces 6 separate records filed at different times by various parties across a wide spectrum of goods and services. Sorting out exclusive trademark rights in the mark in each category is likely to be the subject of litigation and trademark prosecution in the USPTO for years to come.
| Serial Number | Reg. Number | Word Mark | Check Status | Live/Dead | |
|---|---|---|---|---|---|
| 1 | 88759513 | SUSSEX ROYAL | TSDR | LIVE | |
| 2 | 88758820 | SUSSEXROYAL | TSDR | LIVE | |
| 3 | 88758006 | SUSSEX ROYAL | TSDR | LIVE | |
| 4 | 88757567 | SUSSEX ROYAL | TSDR | LIVE | |
| 5 | 88757002 | SUSSEX ROYAL | TSDR | LIVE | |
| 6 | 88751874 | SUSSEX ROYAL | TSDR | LIVE |
This type of crowded field illustrates the importance of priority in trademark rights in the United States (and most other countries), and the advantages of being the first to file, using an Intent-to-Use Application under Section 1(b), other method, to protect trademarks before a product or service is in market in the United States. Of course, trademark priority is a required element of proving likelihood of confusion in federal court or the Trademark Trial and Appeal Board (TTAB).
Trademark Rights Consultation
When technology startups, entrepreneurs, and other trademark owners are considering best practices and approaches to establishing trademark rights in the United States, and in other countries, consultation with an experienced trademark law firm can help evaluate brands for likelihood of confusion analysis, priority clearance, and other legal considerations involved in US trademark rights and due diligence.
