Hi, and welcome back to Legal Geek. Although I promised another Supreme Court themed-segment last week, three long ones in a row is a bit heavy, so we'll come back to that in a week or two to look ahead at the Roberts Court. Instead, this week, we review the latest conflict HBO has entered in the branding space, this time over a company trying to register the phrase "Winter is Coming" as a trademark.
HBO's Game of Thrones brought home a leading 22 Emmy nominations this week for last summer's Season 7, and with such a hot and marketable property, the network is highly defensive at protecting any IP that may arise and be marketable from this show. Another example of this also happened this week when HBO opposed a trademark application for "Winter is Coming" on wine as applied for by a company named Purple Wine Company.
When a company or individual files for a trademark with the U.S. government, the application is first examined for whether the mark qualifies for protection, e.g., does it conflict with any prior registrations in the same field of goods or services or is it merely descriptive or generic, etc. If it passes examination and is allowed, the mark publishes for a period of weeks so that third parties can oppose the registration if they believe they have superior rights to the mark. That's what happened here, as HBO regularly monitors the allowed published new marks for conflicts such as this.
Unlike some other high-value IP companies who need to rely on prior common law use to try and oppose such a trademark registration, HBO has 4 different trademark registrations already finalized on this phrase, which is the title of the first episode of the show as well as the household motto of the Starks, our primary protagonists on the show. Even though HBO does not necessarily cover wine itself in these other trademark registrations, the breadth of goods extends to related items like wine glasses and the like, so it's a fairly clear case to be made that consumers may find confusion in the use of the same name on another product like wine if it is not licensed by HBO.
Particularly where a company like HBO has multiple prior trademark registrations on a mark, like in this case, the opposition position tends to be difficult for the new applicant to overcome. Thus, I expect the Purple Wine Company's application to be withdrawn and if anything, a license agreement may be reached between these parties to allow the use of the Winter is Coming name while giving HBO its fair share.
When a company or individual files for a trademark with the U.S. government, the application is first examined for whether the mark qualifies for protection, e.g., does it conflict with any prior registrations in the same field of goods or services or is it merely descriptive or generic, etc. If it passes examination and is allowed, the mark publishes for a period of weeks so that third parties can oppose the registration if they believe they have superior rights to the mark. That's what happened here, as HBO regularly monitors the allowed published new marks for conflicts such as this.
Unlike some other high-value IP companies who need to rely on prior common law use to try and oppose such a trademark registration, HBO has 4 different trademark registrations already finalized on this phrase, which is the title of the first episode of the show as well as the household motto of the Starks, our primary protagonists on the show. Even though HBO does not necessarily cover wine itself in these other trademark registrations, the breadth of goods extends to related items like wine glasses and the like, so it's a fairly clear case to be made that consumers may find confusion in the use of the same name on another product like wine if it is not licensed by HBO.
Particularly where a company like HBO has multiple prior trademark registrations on a mark, like in this case, the opposition position tends to be difficult for the new applicant to overcome. Thus, I expect the Purple Wine Company's application to be withdrawn and if anything, a license agreement may be reached between these parties to allow the use of the Winter is Coming name while giving HBO its fair share.
The Bottom Line is, big companies with valuable marks, such as HBO and the Game of Thrones family of trademarks, will typically have the resources to legally enforce and block others from registering or using the rights. This is already the 5th time HBO is opposing an allowed trademark this year, including recent filings against mark applications for Slot of Thrones and for Game of Rooms. But this one is probably the strongest case in favor of the TV network giant, so winter has indeed come for this Wine Company. Of course, if you ever file for trademark and find yourself opposed in this process, it's best to contact me or another attorney to help guide you through the options of this complicated trademark process.
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