Santa Clause, Saint Nick, and Father Christmas are references made over and over again this time of the year. A quick search of the United States Patent and Trademark Office (USPTO) database reveals that there are 2,185 trademarks containing the word “Christmas,” and 3,401 which include the name “Santa.” Other trademarks used the terms “candy cane,” “north pole,” and “Kringle.” However, not one of these marks appears to be registered by Santa himself.
Registered trademarks are highly protected, so how is it that Santa can go around using “The North Pole,” “Father Christmas,” and his own name, “Santa Claus” without local and national businesses coming after him for infringement of their trademarks? (Perhaps he gives them extra special presents under the tree on Christmas morning?)
Although there are many things that make the United States a remarkable country for starting and growing a business, one very special right has to do with our trademark common law. “Common law” refers to the rights and rules that are created via the countless decisions made by our judicial system over time. Common law has nothing to do with actual laws, statues, or formal regulations. It is based on the facts and logic used to decide particular arguments and disagreements between the two or more parties to a case. Cumulatively, these decisions form the precedent that becomes our “common law.”
The United States has a strong statue on trademarks (called the Lanham Act) and an entire government organization (the USPTO) dedicated to registering marks and logos; as do other countries that Santa must travel through on Christmas Eve. Unlike most other countries, who have a “first-to-file” system of trademark law, the United States recognizes an ownership right at the first use of the mark. This right attaches immediately when the mark is used in commerce. It is limited to the geographic area of use of the mark, but it endures so long as there is continual and deliberate use of the mark. Continual and deliberate use is reinforced by adding the superscript “TM” following the word, phase, image, tagline, or jingle.
The magical thing about common law trademark rights is that they stop competing businesses within the local area from using identical or similar marks. If a nearby business uses another’s mark for a similar type of goods and services, the first company that used the mark can force the infringing company to change their name, and can usually recover damages as well. Therefore, a common law trademark can suppress a later use of a similar trademark.
A common law trademark can also overpower a registered trademark when the common law rights pre-date the registration date of the registered trademark. However, there are some considerable limitations to common law trademark rights verses those registered with the USPTO.
- First, a registered U.S. trademark protects the mark across the entire country, not just within the geographic area of use of the mark.
- Second, a registered trademark is listed in the USPTO database. This makes it easy for potentially competing businesses to discover the mark, and decide not to use it. It essentially places other companies on notice that someone has claimed a right to that particular mark.
- Third, a registered trademark qualifies to use the ® symbol, rather than the ™ symbol used for common law trademarks.
- Last, and most importantly, a registered trademark allows the owner to file an infringement suit in federal court. The owner has the right to not only recover lost profits, recoup legal fees, and sue for statutory damages; they also have the right to collect triple (3x) damages if the infringement was willful.
My Google research indicates that Santa is 1,747 years old, and goes by over 20 different names, including Santa Clause, Saint Nicholas, Saint Nick, Kris Kringle, and Father Christmas. The Lanham Act was passed in 1946, and its predecessor legislation was passed in 1881. However, our country has protected trademarks under common law since colonial times. Because Santa has been delivering his gifts under his various names and has been utilizing other common terms of the holidays for over 1,700 years, this means that, as per United States trademark common law, Santa is the rightful owner of his tradenames for the delivery of gifts and toys to good boys and girls. And, because he delivers throughout the county, his trademarks enjoy protection throughout the nation.
Santa has nothing to fear when it comes to defending ownership of his tradenames. However, if your company or business is uncomfortable depending on common law rights, and wants to understand available options, please visit us at here to schedule a review of your trademarks.
*Janelle Snyder is the CEO and Managing Partner of SnyderLAW, a leading boutique law firm designed to provide the highest quality outsourced legal services to companies at predictable and reasonable rates – a service called Scribe®. SnyderLAW offers brand building strategies through corporate and intellectual property law, including business entity formation, contracts, joint ventures, trademarks, patents, licensing, and other technology-related transactions.