Santa Claus Trademark: A Legal Opinion

Mr. Santa Claus

c/o UN International Seabed Authority

The North Pole, Arctic Ocean

Re: SANTA CLAUS Trademark and Service Mark

Dear Mr. Claus:

You recently contacted this office to confirm the availability of your proposed “SANTA CLAUS” trademark for use in your business and, if this mark is non-infringing, to assist you in registering it for U.S. and international use. For these purposes you describe your business as “delivering games and toys to good little boys and girls as gifts for Christmas.”

As we counseled you, it is generally useful to offer as broad a description of your goods and services as possible. Therefore, having discussed with you the extensive ancillary activities that accompany your core offering, we propose expanding the description of your services to read, in part, as follows: “The offering, order-taking (including without limitation by lawfully intercepting children’s wish lists, receiving the anguished cries of parents, and deploying Elves and agents at a Bangladeshi call center), packaging and delivery of – leading to the surreptitious return, self-indulgent exchange, wanton destruction, and disappointed-back-of-closet storing of – toys, games, electronics, gifts, and assorted chotchkas.”

As we also explained, the use of the word “Christmas” in defining your business is problematic, in that (1) there are several registered “Santa” marks that use this term in describing their services (including “SANTA HAS A WISH” and “SANTA PAWS”), which could make registering your mark as difficult as an uphill dash in a one-horse open sleigh, and (2) you may desire protection for broader uses in the future. Therefore, we recommend that, to the extent you desire a temporal aspect to the identification of your services, we include the following more expansive description: “[packaging and delivery of et al., per the above] during the unbearably-long, fall-to-winter, gift-giving and ‘Happy Holidays’ greetings season, commencing with Black Friday and extending through the 30-day, post-holiday, unwelcome-or-no-longer-functioning gift-return period, including without limitation Christmas, Hanukkah, Kwanza, and other secular and religious occasions (excluding Purim).”

Finally, as we explained, we must state the date when you first used the mark in providing these services in commerce. You assert that you commenced using the brand in Bari on the Aegean Sea in the Fourth Century.  Although such dates are potentially relevant to international registration, what matters for purposes of U.S. registration is use in commerce between the states or to and from this Great (again) Country.

You explained that your earliest documented U.S. uses took place in the 19th Century, by independent delivery Elves, who collectively qualified as a “related company” because the quality of their delivery efforts was under your control. These initial U.S. uses occurred following your commercial popularization via the poem “A Visit from St. Nicholas” (published in 1823) and the Sun’s influential “Yes, Virginia” editorial (September 21, 1897), despite attempts by some killjoys to pillory these as Fake News. We therefore propose to state your first use in commerce as “00/00/1823 give or take several decades.”

We recognize that your use of the mark may be suspended this year due to the difficulty in obtaining sufficient H-1b visas for your foreign Elvish and Gnomish workers in light of the Administration’s tightened immigration policies. We are happy to report that this should not prevent you from claiming continuing use in commerce, because (1) temporary suspension does not constitute abandonment of a mark unless there is an intent not to resume use (Electro Source, LLC v. Brandess-Kalt-Aetna Grp., Inc., 458 F.3d 931, 935 (9th Cir. 2006)), and (2) our immigration lawyers believe that, for visa purposes, we can qualify your Elves as having a “specialty occupation” in light of their unique skills and know-how related to the delivery of millions of gifts in a single night through the use of flying reindeer.

In short, we believe it is more likely than not that we will be able to register your SANTA CLAUS trademark for the above-described services. Please confirm you would like us to proceed.

Sincerely,

Howard Zaharoff