United States: Can "Merry Christmas" Be A Trademark For Christmas Wrapping?

Last Updated: December 28 2016
Article by David A. Kluft

In 1905, the owners of Smith & Kaufman, Inc., a ribbon & silk company in New York, hit upon an idea. Wouldn't it be great, they thought, if we made a red holiday ribbon for wrapping Christmas presents, with the words "Merrie Christmas" woven into the ribbon at intervals of about two inches in Old English script type? And wouldn't it be even better, they thought, if we could stop our competitors from doing the same thing, so everyone had to buy the stuff from us?

In pursuit of this goal, Messrs. Smith & Kaufman registered the word mark MERRIE CHRISTMAS, as woven into ribbons and other goods, with the United States Patent Office (the words "and Trademark" weren't officially added until 1975). Smith & Kaufman then sold the ribbon, called "Merrie Christmas Ribbon No. 2," in 10-yard rolls. The side of each roll was marked with the words: "Smith & Kaufman, Merrie Christmas, Ribbon No. 2."

By 1908, the upstart Holly Ribbon Design company wanted in on the action. Holly Ribbon produced its own "Merrie Christmas" ribbon with the same words written in a similar Old English script, and sold it for a few pennies cheaper. The side of the roll was marked simply: "Holly Ribbon Design." Smith & Kaufman cried foul and filed a trademark infringement action in the Southern District of New York.

An Aesthetically Functional Christmas

To Smith & Kaufman's surprise, the Court refused to enforce the trademark, and instead articulated something akin to the doctrine of aesthetic functionality (thirty years before the doctrine appeared in the 1938 Restatement of Torts). Under the doctrine of aesthetic functionality, certain visually attractive designs are considered "functional" and not protectable as trademarks because they are necessary to fulfill the purpose for which the good was intended. The easiest example to understand is a Valentine Day chocolate box in the shape of a heart: the heart is not just one of many available shapes, but rather the only shape that fits a certain purpose, so permitting one candy company to monopolize it would substantially hinder competition.

Here, Judge George Chandler Holt came to a similar conclusion. Judge Holt did not doubt that a MERRIE CHRISTMAS trademark could be protected in certain circumstances. In fact, he held in dicta that, had Holly Ribbon called its ribbon "Merrie Christmas" and labeled it as such on the side of the roll (i.e., imitated the plaintiff's packaging as well as its product), it could have been an infringement. But that was not the claim; Smith & Kaufman were trying to protect the words woven into the ribbon itself. Judge Holt found that the value of the "Merrie Christmas" text on the ribbon was not to identify the source, but to make it appropriate for the packaging of a Christmas gift. Judge Holt had "no doubt that the defendants intentionally imitated" the ribbon, but held that this was immaterial because:

Anybody has the right to make such a ribbon, just as he has a right to make a Christmas box or a Christmas card, and, in my opinion, nobody, under the guise of adopting the words as a trademark, can obtain a monopoly for the manufacture of such goods. The truth is the words, when put on the ribbon, are not a trademark, but are an integral part of the ribbon, adding to its value.


About ninety years later, someone tried to do pretty much what Judge Holt held they couldn't: register the text of a holiday greeting as used for a holiday greeting card. In 1994, a company from Pittsburgh filed a series of trademark applications for word marks to be affixed to "postcards," including HAPPY HOLIDAYS FROM, SEASONS GREETINGS FROM, CHRISTMAS GREETINGS FROM and PEACE AND JOY FROM. The PEACE AND JOY FROM application actually slipped through and became a registered mark, but the rest were refused on the grounds that the public would recognize a phrase like HAPPY HOLIDAYS FROM on a postcard not as a source indicator, but merely as a holiday greeting.

On appeal to the TTAB with respect to the HAPPY HOLIDAYS FROM application, the applicant argued that consumers would not assume the words HAPPY HOLIDAYS FROM were merely a holiday greeting because that assumption applied only to greeting cards — this was for postcards, which the applicant argued were "totally different." The applicant also argued that the addition of the word "FROM" rendered the mark "arbitrary." Finally, the applicant used its own successful PEACE AND JOY FROM application as precedent – if PEACE AND JOY FROM can be a registered mark for postcards, why can't the rest as well?

The TTAB affirmed refusal. The TTAB pointed to other examples of "Happy Holidays" appearing on postcards, and rejected out of hand the notion that "Happy Holidays From" on a postcard is arbitrary. As to the PEACE AND JOY FROM mark, the TTAB, clearly not happy the application had been allowed, stated: "suffice it to say that we have no knowledge as to the record in that case . . . in any event, the Board is not bound by the actions of an Examining Attorney."

To view Foley Hoag's Trademark and Copyright Law Blog please click here

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
25 Oct 2017, Webinar, Boston, United States

Foley Hoag will present a 60-minute webinar on Wednesday, October 25 at 12:30 pm EDT, offering guidance for in-house counsel regarding the basics of trademark and design protection in the European Union. Attendees will learn about the opportunities and pitfalls to be on the lookout for when looking to secure, protect, and enforce an IP portfolio overseas.

1 Nov 2017, Webinar, Boston, United States

Please join Foley Hoag on Wednesday, November 1, 2017 for a webinar that covers the details of drafting an appropriate arbitration clause for your company’s commercial contracts.

9 Nov 2017, Conference, Waltham, United States

Please join us on Thursday, November 9 at the Westin Waltham Hotel for our quarterly New England M&A Forum, which brings the latest in market trends and recent legal developments to the New England M&A professionals' community.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.