Meghan Markle has been one of the most talked-about names in the tabloids and social media upon her engagement to Prince Harry. In the aftermath of Megxit, the dubbed term for Meghan Markle and Prince Harry’s decision to step back as senior members of the Royal Family, the uncertainty regarding the “royal” status of Henry and Meghan has sparked a flurry of third party trademark applications of the trademark SUSSEX ROYAL in the U.S. Patent and Trademark Office (“USPTO”) and abroad.
On January 8, 2020, the Duke and Duchess of Sussex announced their decision on their Instagram account (@sussexroyal) to step back as senior members of the Royal Family (the “Royal Decision”). In the ensuing days, six applications were filed with the USPTO of the mark SUSSEX ROYAL, by parties seemingly unrelated to the Duke and Duchess. [1] These applications included one such entry for “communication services via computers and the internet,” filed by California intellectual property attorney Joel Fogelson on January 8th, immediately after the Sussexes’ announcement. Additionally, trademark applications of SUSSEX ROYAL were filed in Australia, Canada, Europe, New Zealand, Spain, and Switzerland, all within days following the Royal Decision.
It comes as no surprise that the media-savvy Duke and Duchess have indeed taken the proper steps of seeking trademark protection of the SUSSEX ROYAL name. Within just weeks of setting up their @sussexroyal Instagram account in April 2019 to market SUSSEX ROYAL as a global trademark, the Duke and Duchess filed an application in the United Kingdom of SUSSEX ROYAL covering classes 16, 25, 35, 36, 41 and 45 under Application UK00003408516 (the “U.K. Application”). This application was filed in the name of The Royal Foundation of the Duke and Duchess of Sussex[2] on June 21, 2019. Through their @sussexroyal Instagram account and website https://sussexroyal.com/, the Duke and Duchess intend to market the various goods and services covered in the multiple classes under the SUSSEX ROYAL trademark, including clothing, stationery and the running of emotional support groups. In browsing @sussexroyal and www.sussexroyal.com, there doesn’t appear to be any branded goods marketed or sold on these media sites as of yet.
Exactly one week prior to the Royal Decision, the Sussexes filed an International Application of SUSSEX ROYAL with the World Intellectual Property Organization (“WIPO”) based on the underlying U.K. Application. The International Application, filed on January 1, 2020, seeks to extend the protection of the SUSSEX ROYAL trademark to the British Commonwealth countries Australia and Canada as well as to Europe and the U.S. in all six classes covered in the U.K. Application (the “Sussex Royal International Application”). To date, WIPO does not appear to have assigned an International Application number nor provided the data to the respective Trademark Offices in the designated countries[3].
While it is unclear as to whether the trademark applicants in the U.S., Australia, Canada, Europe, New Zealand, Spain, and Switzerland were aware of the filing of the Sussex Royal International Application[4], the filing date of January 1, 2020, is earlier than any of the post-Megxit filing dates of the other applicants. Therefore, the Sussexes have priority under a first to file system. However, there is one caveat: the Sussex Royal International Application and its protection in the various countries remain subject to the fate of the U.K. Application.
Just several days ago, an extension to oppose the published U.K. Application was filed in the U.K. Intellectual Property Office. For reasons unknown[5], an Australian doctor filed a complaint to extend the opposition deadline until March 20, 2020. In the extended period, more oppositions, or threats of opposition, could now be filed.
In the event a formal opposition is filed against the U.K. Application, it may be a very costly legal battle for The Royal Foundation of the Duke and Duchess of Sussex, and the U.K. Application will be at risk. Moreover, if the U.K. Application does not issue registration, the entire Sussex Royal International Application will fail.[6]
As can be seen by the number of post-Megxit applications and recent opposition extension, questions may arise over the legitimacy of Meghan Markle and Prince Harry’s continued use of the term ROYAL as part of the trademark SUSSEX ROYAL. Although the Duke and Duchess will no longer receive public funds or use their HRH titles, there is no decree prohibiting their use of the “ROYAL” moniker.
Regarding an examination of the Sussex Royal International Application in the various Trademark Office’s, a trademark examiner in the USPTO is not likely to refuse registration of the U.S. designation on the grounds of inappropriate use of the term “ROYAL” or otherwise request a disclaimer of this term. Due to the priority filing of the Sussex Royal international Application, the six post-Megxit applications will be suspended indefinitely as Meghan and Harry await the fate of the U.K. Application and its bearing on the Sussex Royal International Application.
[1] – Application No. 88751874 of SUSSEX ROYAL covering class 38, filed on January 8, 2020.
– Application No. 88757002 of SUSSEX ROYAL covering class 24, filed on January 13, 2020.
– Application No. 88757567 of SUSSEX ROYAL covering classes 16, 25, and 33, filed on January 13, 2020.
– Application No. 88758006 of SUSSEX ROYAL covering classes 16 and 25, filed on January 14, 2020.
– Application No. 88758820 of SUSSEXROYAL covering class 25, filed on January 14, 2020.
– Application No. 88759513 of SUSSEX ROYAL covering class 24, filed on January 15, 2020.
[2] This move solidified the Sussex’s separation from their former joint charity with Prince William and Kate Middleton.
[3] Australia, Canada, Europe, and the U.S.
[4] A WIPO database search would have revealed the Sussex Royal International Application details within days of the January 1, 2020 filing date.
[5] It does not appear that the Australian doctor is one of the trademark applications of SUSSEX ROYAL in the Australian Trademark Office.
[6] If the Sussex Royal International Application falls, so do the extension requests in Australia, Canada, Europe, and the U.S.