Rolex Files Objection to Hallmark’s New Trademark Application
Rolex’s recently filed notice of opposition with the USTPO claims that Hallmark’s new crown trademark (right), which is pending registration, is “nearly identical in appearance and commercial impression” to its famous logo (left) and would cause consumer confusion if used on jewelry.
"Kansas City, Mo.—Rolex is pushing back against greeting card company Hallmark’s attempt to register a new version of its longstanding crown logo for use with jewelry.
Rolex’s first filing related to the new Hallmark trademark came Jan. 22, when the watchmaker submitted a request for a 90-day extension to file a notice of opposition to Hallmark Licensing LLC’s trademark application.
The extension was granted, and Rolex filed the notice April 23, one day before the extension was set to expire.
In the notice, the brand urges the U.S. Patent and Trademark Office (USPTO)’s Trademark Trial and Appeal Board to block Hallmark’s application to register a new logo described as “an open crown design circumscribed by a circle that is interrupted by a leaf” for use on goods in Class 14 (jewelry).
While Hallmark has been using its own crown logo for decades and holds active trademarks across a variety of goods and services, the watchmaker states that with this latest application, Hallmark is “seeking to apply its crown mark on goods that are identical or in some way related to Rolex’s famous watches and/or Rolex’s promotional goods.”
Hallmark submitted the trademark application for the new logo on March 24, 2023, stating it plans to use it on candles, clothing, paper products, drinkware, and games, as well as jewelry.
Rolex argues that if the USPTO registers the trademark for use on jewelry, it will cause confusion for consumers as to the source of the products, therefore damaging the Rolex brand.
Along with “priority and likelihood of confusion,” the notice also lists “dilution by blurring” (impairing the distinctiveness of the trademark) as an additional ground for opposition.
Rolex did not respond to a request for a comment on the case beyond what is included in its opposition filing.
Hallmark did not respond to request for comment by deadline.
Rolex’s notice, relatively short and direct, begins by referencing the watch company’s 60-year history of using the crown logo in connection with its watches in the United States.
It also noted that since 2008, the trademark also has been used by retail stores that carry products sponsored or authorized by the brand.
Rolex stated that over the last six decades, it has invested more than $100 million advertising and promoting the mark, notably on campaigns where the crown symbol is itself the focus.
The brand also cites the use of the crown logo in its promotion of events and sponsorships of sporting, entertainment, cultural and charitable endeavors, as well as scientific disciplines and “an equally wide spectrum of the arts.”
For 30 years, it has distributed or sold promotional goods bearing the logo—things like hats, key chains, sunglasses, and pins—through its official jewelers and at these events.
Rolex said that, due to long-term use of the crown logo and the brand’s vast advertising and promotion of it, the trademark has become “extremely well known and famous” to the extent that “similar items sold or marketed under a mark confusingly similar to its Crown Design trademark are, and will be, immediately and exclusively associated with Rolex.”
The status of Rolex’s opposition notice is currently ... "
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