A Black Santa Claus Trademark Battle Is Currently Brewing
Something we don’t typically think of during the holidays is intellectual property infringement. However, Christmastime isn’t a time of giving when it comes to trademark law. For instance, there’s currently a battle brewing between the owner of the Black Santa trademark and an applicant seeking to register “My Santa Is Black.” The Grinch will no doubt enjoy the mayhem.
Black Santa Claus Is in the Middle of a Trademark Fight
Representations of Santa as a black magical being date back to at least the late 1800s in America. However, this doesn’t necessarily mean he belongs to the public. This is evidenced by the fact that The Black Santa Company has several trademarks for“Black Santa” and similar terms. This has been the case since 2013. Due to that ownership, they’ve opposed the registration of “My Santa Is Black.”
Filed just days after Christmas in 2021, the application for “My Santa Is Black” was filed by Marian Myers Rembert. The trademark registration process was undertaken to use the term on clothing items. While the phrase certainly brings visions of an African-American Santa Claus to mind, it doesn’t actually contain the term “Black Santa.” So, does the opposer in this case have a valid trademark infringement case?
Black Santa and Consumer Confusion
In the opposition notice filed with the USPTO, The Black Santa Company claims that registration of “My Santa Is Black” will create a likelihood of confusion and cause dilution to its trademark. In essence, they allege that consumers will be confused as to the source of the clothing .
The opposition also claims that registration of the “My Santa Is Black” phrase will dilute the value of the “Black Santa” trademark. Since the company has several trademarks under this name — including coverage for clothing items — it would seem as if they have a strong case. However, can anyone really claim rights over a black Santa Claus? Also, would the “My Santa Is Black” phrase really confuse consumers? The TTAB may need to answer these questions.
What Happens Next?
If the applicant for the “My Santa Is Black” trademark decides to not move forward, this could easily be an open-and-shut case. Many applicants choose to avoid legal hassles once they’ve received a trademark opposition. If they choose to fight back against the opposition notice, however, the Trademark Trial and Appeal Board may soon answer a variety of important questions.
For instance, can someone really stop others from featuring an African-American Santa Claus on merchandise? More importantly, can they prevent the mere descriptive mention of him? Santa Claus copyrights are frequently part of the public domain, but would this be the case for a black Santa Claus as well?