Post “Megxit”, the decision of Meghan Markle and Prince Harry to step down as working royals, the Queen and senior officials ruled that the Duke and Duchess of Sussex are no longer authorized to use the term “royal’ as part of their famous SUSSEX ROYAL brand.
In all matters involving the term “ROYAL,” or “ROYALTY,” it is the Queen’s reign and she ruled that the former “royals” could no longer use this term. Despite having invested tens of thousands of dollars to build the brand and file global trademark applications for the mark SUSSEX ROYAL, Meghan and Harry were required to change the name in the spring of 2020. Accordingly, the couple had to cease all use of the name SUSSEX ROYAL, which included withdrawing their global trademark applications and changing the name of their charitable foundation SUSSEX ROYAL FOUNDATION.
Indeed, the Duke and Duchess have shied away from their use of SUSSEX ROYAL. In looking at the couple’s mega-popular Instagram account @sussexroyal, which has over 11 million followers, there have been no posts since March 30, 2020. Their worldwide trademark applications of SUSSEX ROYAL have since been withdrawn from the various trademark offices.
Immediately following the royal ban, the Duke and Duchess adopted the name ARCHEWELL (named after their now one year old son) for their new non-profit organization intended to run emotional support groups, a multi-media educational empire and a well-being website. On March 3, 2020, an application of the mark ARCHEWELL was filed with the United States Patent and Trademark Office on behalf of Cobblestone Lane LLC (of Delaware), having an address in Beverly Hills, California where the royal-free couple now resides. This application, filed under Serial No. 88818790 is based on an intent to use the mark in connection with the following goods and services in classes 9, 16, 25, 35, 36, 41, 44 and 45:
- Class 9: Downloadable articles, educational materials, magazines, electronic books, and audio books on a variety of topics; downloadable photographs; downloadable image files containing artwork, text, audio, video, and graphics relating to music, motion picture films, articles, books, audio books, podcasts, audiovisual entertainment, television shows, digital entertainment content, and informational programming; prerecorded video cassettes, CDs, DVDs, discs, MP3s all featuring music, motion picture films, podcasts, audiovisual entertainment, digital entertainment content, informational programming and scripted, unscripted and animated television shows; computer software and downloadable applications for accessing, downloading, streaming, playing, and viewing digital entertainment content and informational programming; downloadable computer software; downloadable music, motion picture films, podcasts, audiovisual entertainment, digital entertainment content, informational programming and scripted, unscripted and animated television shows.
- Class 16: Fiction and non-fiction books on a variety of topics; printed educational materials and articles on a variety of topics; general feature magazines and periodicals; calendars; photographs; posters; art prints; paper stationery; journals; notebooks; pens; pencils; paperclips; binders.
- Class 25: Clothing, namely, tops, bottoms, shirts, skirts, dresses, pants, jeans, shorts, sweaters, jackets, socks; loungewear; rainwear; footwear; headwear.
- Class 35: Charitable services, namely, promoting public awareness of a variety of causes; charitable services, namely, coordination of non-monetary contributions to charities and non-profits; charitable services, namely, developing and coordinating volunteer programs and community service projects; matching volunteers with non-profit organizations; marketing services, namely, promotional services in the field of planned-giving for non-profit and charitable organizations; development of charitable marketing campaigns for others; providing a website featuring content relating to philanthropy, monetary giving, volunteer and career opportunities; administration of a program to promote community service.
- Class 36: Charitable fundraising services; charitable foundation services, namely, providing fundraising activities, scholarships and financial assistance for programs and services of others; providing grants to charities, non-profits, and persons in need; financing of charitable projects; accepting and administering monetary charitable contributions; charitable fundraising services by means of organizing and conducting special events.
- Class 41: Development and dissemination of printed educational and training materials on a variety of topics; education and training services, namely, providing classes, lectures, seminars, conferences, workshops, and retreats on a variety of topics; educational and charitable services, namely, mentoring of persons in need on a variety of topics; providing information related to education services; organizing, conducting and hosting events and exhibitions for cultural, sporting, health, mental health and entertainment purposes; providing information relating to cultural, sporting, health, mental health and entertainment events and activities; providing a website featuring information in the field of physical fitness; consulting services in the field of physical fitness; providing information in the field of physical fitness; providing recognition and incentives by the way of awards to entities and individuals who have made significant charitable contributions; providing recognition and incentives by the way of awards to demonstrate excellence in the field of community service and charitable giving; publishing of books, magazines; publishing of electronic publications; digital video, audio, and multimedia publishing services; creation, development, production and distribution of music, motion picture films, podcasts, audiovisual entertainment, digital entertainment content, informational programming and scripted, unscripted and animated television shows; creation, development and production of live stage performances, live music performances, and live acting performances; entertainment services, namely, providing online non-downloadable video clips, audio clips, digital entertainment content, and informational programming containing audio, video, and text; providing on-line non-downloadable music, motion picture films, podcasts, audiovisual entertainment, digital entertainment content, informational programming and scripted, unscripted and animated television shows through broadcast television, satellite, cable television, global computer networks, websites, wireless devices, mobile applications, set top boxes, webcasts, and on-demand streaming media; providing online non-downloadable software and web apps for accessing, downloading, streaming, playing, and viewing digital entertainment content and informational programming; providing online non-downloadable software and web apps; providing a website featuring information in the fields of entertainment, music, motion picture films, articles, books, audio books, podcasts, audiovisual entertainment, television shows, digital entertainment content, and informational programming.
- Class 44: Providing a website featuring information in the field of nutrition, general health and mental health; counseling services in the field of nutrition, general health and mental health; mental health therapy services; consulting services in the field of nutrition, general health and mental health; providing nutrition, general health and mental health information.
- Class 45: Organizing and conducting support groups for persons in need; providing emotional counseling and emotional support services for persons in need; providing case management services, namely, coordinating social, personal care, and psychological services; providing information about support groups, emotional counseling, emotional support, social care, personal care, health, mental health and psychological services.
Upon examination in the USPTO, an advisory office action was issued on June 2, 2020. Despite tabloid rumors that the application was refused registration, several issues were raised but no refusal has been made.
As is fairly typical in applications containing a long litany of goods and services in multiple classes, the trademark examiner proposed clarification of particular wording in the identification as well as requested the specific fields of use for the educational and charitable services. Additionally, the examiner required a signature of the unsigned application filed in the name of Cobblestone Lane LLC. While it is appropriate that an officer or member of the LLC sign an intent to use or use based application rather than the lawyer, the Duke or Duchess failed to sign the application.
Lastly, the examiner referenced a prior-filed application of the mark ARCHECARES as a potential bar to registration of the application. Interestingly, the status of the referenced application was marked abandoned on the very same day that the office action was issued in ARCHEWELL. Considering the abandonment of the prior referenced application, no potential refusals of the ARCHEWELL application remain. As long as Cobblestone Lane is able to submit a signature on behalf of Cobblestone Lane and appropriate amendments to the description of goods and services, the application will be approved and published for opposition.
Under U.S. trademark law, use of a mark in commerce is a prerequisite to federal registration in applications which are based solely on intent to use. Although there is news that the Duke and Duchess will not launch their charitable foundation until 2021, the couple will have three years after the allowance of the application to show use of ARCHEWELL in connection with the goods and services covered in the several classes of the application.
As for the fate of the SUSSEX ROYAL trademark in the U.S., it is yet to be seen how things will play out in the USPTO with regard to the seven pending applications of this mark. The Sussexes have withdrawn their international application for the mark SUSSEX ROYAL and as a result their application in the USPTO has likewise been withdrawn. Yet several third party pending applications of this mark covering various unrelated goods and services remain.
Unlike U.K. law, which requires permission from the British royal family to use the terms ROYAL and ROYALTY in the name of a business, company or product, in the U.S. essentially anyone can use and seek to register these terms. However, the trademark examiner issued refusals in the pending third party U.S. applications based on a false connection with the Duke and Duchess. This universal refusal was issued in April, subsequent to the announcement that Harry and Meghan could no longer use the term “ROYAL” in their branding. It is uncertain whether or not the examiner considered evidence that the Duke and Duchess were no longer entitled to use SUSSEX ROYAL or otherwise be affiliated with any name containing the term “ROYAL.” We can only wait and see whether arguments are submitted by the third party filers in response to the universal refusal by the deadline of October 11, 2020.