The Consequences of Mariah Carey's Failure to Defend her Trademark Application

Mariah Carey has widely been referred to by fans as the ‘Queen of Christmas,’ but when she attempted to trademark the title last year, it was met with pushback from another singer and songwriter who claimed to hold the same title. Scott Hervey and Tara Sattler discuss this dispute on this Holiday edition of The Briefing.

Watch this episode on the Weintraub YouTube channel here.

Show Notes:

Scott:
In 2022, Mariah Carey sought to register the trademark ‘Queen of Christmas’ for a wide variety of goods and services. Her application was opposed by a singer-songwriter who claimed she was known as the Queen of Christmas. I’m Scott Hervey with Weintraub Tobin, and I’m joined today by my partner Tara Sattler to discuss this holiday trademark dispute on this next installment of The Briefing, Christmas edition, by Weintraub Tobin.

Tara, welcome to The Briefing. You have a great holiday sweater on.

Tara:
Thanks for having me, Scott, and so do you.

Scott:
So, as you know, Tara, Mariah Carey is extremely well known for her 1994 holiday hit “All I Want for Christmas is You”, which has reportedly made more than $60 million in royalties alone. In 2022, her company filed a trademark registration application for Queen of Christmas, covering a wide variety of goods and services. In the prosecution of her trademark application, while the United States Patent and Trademark Office trademark examiner assigned to the application raised a few issues, the application pretty much sailed through to publication.

Tara:
Then, later that year, singer-songwriter Elizabeth Chan filed an opposition to the registration of the mark. The basis of Chan’s opposition was likelihood of confusion. In her filing, Chan claimed that she is pop music’s only full-time Christmas singer-songwriter and has herself been repeatedly dubbed the Queen of Christmas. She claims to have prolifically written, composed, and performed only original Christmas holiday-themed songs for more than a decade, and due to the notoriety that she’s attained for this singular and specific achievement, Elizabeth Chan has been referred to as the Queen of Christmas by multiple media, including in 2018 by the New Yorker Magazine.

Scott:
In her opposition, Chan claims to have been in continuous use of the Mark Queen of Christmas since at least 2014. Chan further argued that Queen of Christmas should not be owned or controlled by Ms. Carey’s company since Ms. Carey herself has admitted that she did not create the title or moniker Queen of Christmas, and she does not even consider herself the Queen of Christmas.

Tara:
So, with the opposition filed, Ms. Carey’s company was required to file an answer by a date certain, which did not happen. As a result, a default was entered against Ms. Carey’s company, and the application to register the mark was deemed abandoned by the TTAB. So Scott, do you think that Carey was being Scrooge in filing her trademark application?

Scott:
I don’t think so. She was represented by a highly reputable law firm and she certainly could have pressed her rights if she desired to do so. Maybe she was moved by the opening paragraph in Chan’s petition, which said Christmas is big enough for more than one queen. Over the decades, several recording artists have been dubbed with the nickname Queen of Christmas, including Darlene Love, Brenda Lee, Elizabeth Chan, and Mariah Carey. This is a perennial nickname that has been and will continue to be bestowed on multiple future singers for decades to come. I mean, whatever Carey’s motivation was not to defend against the petition and to allow her application to go abandoned. This thing we can be certain of, as certain as there is a Santa Claus, that there will be more than one queen of Christmas.

Tara:
Well, that’s a really interesting case study and example. Scott, thanks for telling us about this one.

Scott:
Thank you for listening to this episode of The Briefing. We hope you enjoyed the episode. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. And if you have any questions about the topics we covered today, please leave us a comment.