You can be the “Princess” or the “Shaman,” but you still need to register and use your trademark rights

The story of the trademark registration THE PRINCESS AND THE SHAMAN

The Norwegian media has recently brought the US trademark registration THE PRINCESS AND THE SHAMAN (no. 7402680) into the spotlight. The registration is owned by Ohana Productions LLC, associated with Princess Märtha Louise of Norway and Durek Verrett.

THE PRINCESS AND THE SHAMAN is registered in class 41 amongst others, including SHAMANISM, in various services related to entertainment, seminars, podcasts, and education.

The Norwegian media has debated Princess Märtha Louise and Durek Verrett’s trademark registration THE PRINCESS AND THE SHAMAN in the US. Princess Märtha Louise and her Royal family had agreed not to use the title “Princess” in connection with commercial activities. However, according to the Norwegian newspaper, Aftenposten, during the prosecution of their trademark application in the US, Princess Märtha Louise and Durek Verrett filed documentation of the use of the trademark and consented to the use and registration of the trademark to the USPTO.

Furthermore, Aftenposten has asked Princess Märtha Louise’s manager why they have registered the trademark if they have no plans to use it commercially. The manager referred to her previous statements from 2023, where she replied that the purpose of the trademark registration is to “ensure that no one else misuses it. Not to use it themselves.”

Setting aside the Norwegian debate itself about the use of the Princess title, the story of this trademark registration sparks off some general reflections about passive trademark registrations, which may be useful and effective to include in trademark strategies.

Passive trademark registrations: silent guardianship

On a general basis, when registering a trademark, the owner is, in principle, not obliged to use the trademark. A trademark tale as old as time is passive trademark registrations. Their purpose is to be defensive or to be used in the future but without immediate or active business or intention to use the trademark in commerce. Passive trademark registrations quietly protect a brand or creation without the owner’s active effort when it comes to commercial use of the trademark.

Taking into account the information from the Norwegian media, THE PRINCESS AND THE SHAMAN may be seen as passive registration in nature. This strategic move ensures that others cannot use their trademark or any related terms commercially without permission from the owners.

The powers of passive trademark registrations

As mentioned above, one of the key benefits of passive trademark registrations is the protection they offer. By registering a trademark, even if it’s not immediately in active use, the owner gains exclusive rights to identical and similar trademarks within the registered jurisdiction. Consequently, no one else can legally use identical and similar trademarks in commerce without permission from the owners of the registration, thereby preventing third parties’ potential infringement or dilution of the brand.

For public figures like Princess Märtha Louise and Durek Verrett, passive trademark registrations can also contribute to the protection of their personal brands, reputations, and identities. For example, by securing their names and any associated titles or phrases, in principle, they avoid unauthorized third parties from exploiting their names commercially, which could lead to confusion or misuse of their identities.

The perils and pitfalls of passive trademark registrations

One should be mindful that there are some related risks to passive trademark registrations. The main concern is that in most jurisdictions, after a period of time subsequent to the publication of the trademark registration, the trademark registration becomes subject to non-use cancellation actions from third parties. This could eventually result in the cancellation of the trademark registration. Furthermore, in some jurisdictions, including the US, a trademark that is not used in commerce may not be renewed because the registration does not meet the requirement of proving the use of the trademark. This means that trademark owners must actively demonstrate that they are engaged in, or at least intend to engage in, commercial activity related to the mark.

Additionally, passive registrations can sometimes lead to unnecessary complexity, particularly if they are overly broad or involve marks that do not clearly reflect the owner’s actual business interests. In such cases, businesses may face challenges when trying to enforce their rights in a specific area.

The end…

In conclusion, whether or not the US trademark registration THE PRINCESS AND THE SHAMAN lives happily ever after remains uncertain, but we extend our best wishes to the happy couple.

Author’s note: This article does not constitute legal advice and is written from a Norwegian trademark perspective. Portions of the article were enhanced with input from ChatGPT.

← Back to News