Trademark terms are important, they can mean the difference between obtaining a trademark registration or having your application declined. They are especially important when you are planning to secure sole use of a word. An example of this is currently being played out with the Sussex’s bid to trademark the word ‘Archewell’, the name of their new charity and entertainment empire.
This week it was reported in the Daily Mail that Prince Harry and Meghan applied to have their fundraising set-up, Archewell Foundation, and podcast firm, Archewell Audio, protected by company law in America and sent the relevant documents to the US Patent and Trademark Office asking for the sole use of the terms.
They have been told that the applications need clarification if they are to be made law. The USTPO replied: ‘Applicant must clarify that these are entertainment-based services’. In their application for Archewell Audio, the couple reportedly said the company was for the ‘creation, development, production and distribution of podcasts, audio programmes, music and audio books’.
The application went on to say that the firm would create ‘live podcast performances, live stage performances, live music performances and live audio-book readings.’ And, once more, the examiner replied requesting clarification. ‘Applicant must clarify these are entertainment-based services,’ as well as ‘specify the nature of the ‘live stage performances’.’
The Daily Mail previously reported that Harry and Meghan have listed an extensive range of potential ventures in their application to the Intellectual Property Office in London, including everything from ‘digital entertainment content’ to a platform ‘featuring information in the field of nutrition, general health and mental health’.
The road to securing their international trademark registration has been anything but smooth. The couple have previously filed an opposition to a trademark application placed by Filipino businessman, Victor Soriano, over his ‘Archewell Harvatera’ deodorant name, which he says he’s willing to “fight to the death” to keep.
Mr Soriano applied for the name in July 2020 in the Philippines, months after the royals launched their foundation in April. Mr Soriano says to date he is the only person in the world to have filed for cosmetics and fragrances for Archewell – which Meghan and Harry had not planned to do.
We will continue to watch developments of the Archewell saga with popcorn in hand.
Questions about this
Why was the Archewell trademark application asked for clarification?
As reported in the Daily Mail, the US Patent and Trademark Office examiner asked the applicants to clarify that the services listed for Archewell Audio were entertainment-based, and to specify the nature of the live stage performances. The application had described the creation, production and distribution of podcasts, audio programmes, music and audio books, along with live performances, and the examiner wanted more precise wording before it could proceed.
Answered by Jonathan Paton, Founder & CEOWhy does the wording of goods and services matter in a trademark application?
The terms you choose can mean the difference between securing a registration and having an application declined. Examiners need to know exactly what goods or services a mark covers, so vague or broad wording often leads to requests for clarification, delays or objections. Careful drafting matters most when the aim is sole use of a word, because the specification defines what the registration will actually protect.
Answered by Jonathan Paton, Founder & CEOCan someone in another country register a name you already use?
Yes, it can happen. Trademarks are territorial, so a registration or launch in one country does not stop someone filing elsewhere. In the Archewell example, a businessman applied for the name in the Philippines for a deodorant in July 2020, months after the foundation launched, and the couple filed an opposition. Registering early in the countries that matter, and watching for conflicting applications, helps reduce that risk.
Answered by Jonathan Paton, Founder & CEO
