If you’ve ever listened to Christmas music – and chances are high that you have – you’re more than likely familiar with the song, “All I Want for Christmas is You,” co-written and sung by the one and only Mariah Carey. That is the five-time Grammy winner, former wife of human populator (Nick Cannon), “Queen of Christmas” Mariah Carey, who, in 1994, blessed the world with the modern Christmas pop hit for the first time. Now, 18 years later, the song continues to spread the Christmas spirit – but is only one of many Christmas songs released and re-released by Mariah Carey over the years.
Given the critical acclaim of Carey’s several original Christmas songs (none more so than “All I Want for Christmas is You”), paired with more than two dozen Christmas covers released over the last two decades, the media, the public, and probably Santa Claus, himself, have taken to associating Carey with the moniker – “Queen of Christmas.” And, Carey, herself, seemed (albeit somewhat begrudgingly at first) to like that – so much so, that in March of 2021 she filed a trademark application to trademark the phrase/nickname. If Carey’s application had been successful, she (through her company Lotion, LLC) would have owned the exclusive rights in and to the name, in a wide variety of goods and services, including: fragrances, music, face masks, jewelry, books, posters, bags, glassware, mugs, clothing, Christmas decorations and toys, EVERY kind of milk, hot chocolate, coffees, teas, beer, wine, online retail store services, audio and audio visual streaming, entertainment services, and a whole lot more. Suffice it to say, Mariah Carey’s Christmas wish list (for her proposed trademark) was a lot longer in 2021 (some 50+ goods/services) than in 1994 (“You”).
Unfortunately for Carey, the Trademark Trial and Appeal Board (TTAB) recently denied her application following an opposition proceeding. When filing a trademark application with the United States Patent and Trademark Office (USPTO) there are certain steps an applicant must pass prior to being issued an official trademark. These steps include – inter alia – responding to office actions and requests from trademark examiners (lawyers employed by the USPTO), making amendments to the application accordingly, and overcoming public scrutiny during a 30-day publication window. During that 30-day window, “any party who believes it will be damaged by the registration of the mark may file a notice of opposition” with the TTAB. This is where Carey’s application fell short, as one Elizabeth Chan opposed Carey’s claim to “Queen of Christmas,” posing that “Christmas is big enough for more than one ‘Queen.’”
Elizabeth Chan is a musician whose YouTube channel states that she is “known as the ‘Queen of Christmas,’” and “is a Billboard-charting songwriter and artist who has written over 1000+ Christmas songs.” In her filing, Chan asserted two grounds for opposition:
(1) That Carey’s proposed mark would cause confusion with Chan’s already used “Queen of Christmas” brand; and
(2) That Carey’s proposed mark would create a false association between Carey’s mark and Chan’s unique identity.
Ultimately, the TTAB instituted (i.e., granted trial for) Chan’s opposition of Carey’s proposed mark, but Carey never responded (as required) to Chan’s notice of opposition. Accordingly, the TTAB entered a judgment by default on November 15, 2022 and Carey’s trademark application was denied, without ever reaching the merits of Chan’s arguments or Carey’s rights in the name. Regardless of this outcome, Mariah Carey will always be the Queen of Christmas in our hearts and on the charts, just not in our shopping carts.
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