It is quite rare for a trade mark refusal to make the headlines of the national press. But when applicants are the Duke and Duchess of Sussex, Prince Harry and Meghan Markle, it is perhaps no surprise that the rejection of their US trade mark application for 'Archewell' has garnered media attention.

The US application for 'Archewell' – the name for the Sussexes' new charitable organisation after dropping their plans to name it 'Sussex Royal' – has received a non-final objection, on the grounds that the list of services covered by the application is too vague. In addition, the trade mark application form was also unsigned.

The US Examiner raised an objection to the term 'providing a website featuring content relating to philanthropy, monetary giving, volunteer and career opportunities' for being indefinite and over-broad. The Sussexes can overcome the objection by further specifying the nature of the content provided.

Such refusals are not uncommon. When a trade mark application is filed, the applicant must list all the goods and services they intend to protect under the mark. The application is then examined by the relevant trade marks registry of the territory in question.

In practice, the US Patents and Trademarks Office – the body responsible for examining and registering trade marks in the US – adopts a relatively stringent approach to the classification of goods and services, ensuring that the specifications covered by an application are precise and specific. As a result, applicants may be asked to provide further information about the goods or services they wish to protect, to ensure their application is limited to the particular areas of interest.

A trade mark attorney or intellectual property solicitor can assist you when preparing your trade mark application to reduce the chance of receiving a refusal or an opposition from a third party. If a refusal is received, as in the case of 'Archewell', then an attorney can advise on the best way to respond.

The Duke and Duchess of Sussex also have pending trade mark applications for 'Archewell' in the European Union, Australia and Canada. In addition, the US application has been used as the basis for an International trade mark application, which currently designates China, India, Japan, Mexico, New Zealand and Russia. The applications cover a wide range of charitable and educational services, as well as merchandise such as clothing and books.

Originally published June 19, 2020.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.