It goes without saying that a brand’s logo acts as its most crucial visual identity, helping establish a strong relationship with the customers. Often, brands can become overly protective about their logos, especially in the case of highly popular and successful brands that go to extreme lengths to make sure their logos are not replicated. While Ferrari is one of the best examples of such a brand, Rolex is also very protective of its highly recognizable logo. The Swiss luxury watchmaker has been locking horns with Hallmark over the use of its crown logo for many decades. Rolex initiated a fresh trademark opposition proceeding against the American greeting cards company for the use of its logo that features a crown.
The notice of opposition lodged by Rolex on April 23 asks the U.S. Patent and Trademark Office (“USPTO”)’s Trademark Trial and Appeal Board to block Hallmark Licensing LLC (“Hallmark”) from registering a logo that consists of “an open crown design circumscribed by a circle that is interrupted by a leaf” for use on goods ranging from candles, clothing, and paper products to jewelry, drinkware, and boardgames. According to the document, Rolex contends that granting Hallmark’s registration in Class 14 (jewelry) would harm its interests, citing the resemblance of Hallmark’s logo to Rolex’s iconic crown logo.
In the appeal, Rolex claims that Hallmark is “seeking to apply [a lookalike] crown mark on goods that are identical or in some way related to Rolex’s famous watches and/or Rolex’s promotional goods.” Consequently, Rolex urges that if Hallmark obtains registration for its similar logo, particularly for jewelry items, it could negatively impact the Rolex brand. This could lead to consumer confusion regarding the origin of Hallmark’s products, potentially harming Rolex’s reputation and brand identity.
To support its case against Hallmark, the iconic Swiss watchmaker stated in the notice of opposition how the brand has used the “distinctive crown design logo” on each Rolex watch it has distributed in the US “for over 60 years,” claiming that it has sold “hundreds of millions of watches in the United States.” Rolex also argues that it has “consistently used the crown design trademark in its advertisements [and] promotional materials” for more than six decades and has spent “in excess of $100 million, over the past 60 years, advertising and promoting its crown design trademark,” making it highly recognizable to customers in the US.
Sharing more details about its advertising activities, Rolex argues that it actively uses the emblem in “national publications, television and online media and through promotional events,” the crown logo often serves as “the focal point” of Rolex’s advertising campaigns. The Swiss brand also states that it “has sponsored and promoted some of the largest sporting, entertainment, cultural and charitable events throughout the United States,” with the logo acting as the visual identity.
Additionally, Rolex claims that it has “also sponsors events that promote and support a broad array of scientific disciplines and endeavors, an equally wide spectrum of the arts, including dance, film, literature, music, theatre, visual arts, and architecture, and a whole host of non-profit organizations engaged in all manner of public works. The Crown Design trademark has been and continues to be used and promoted throughout all of Rolex’s events and sponsorships.”
To further add to its argument, Rolex claims in the notice that it has consistently used the crown logo in various promotional activities, with the crown design trademark “appear[ing] on all of those goods and often appears alone on the following: clothing such as hats, vests, scarves and ties; key chains; small leather goods like wallets and travel kits; leather carry bags, cologne; sunglasses, pins, cufflinks and pens.”
Another point Rolex states is that since 2008, “the crown design trademark has also been used to identify retail stores [in the U.S.], featuring watches and jewelry, which are sponsored or authorized by Rolex to sell its genuine, high-quality products,” claiming that the crown logo can be found on “all of Rolex’s point of sale displays and packaging that accompanies each new Rolex watch.”
Rolex culminates the notice by stating: “As a result of its long, continuous use, its vast advertising and promotion of the Crown Design trademark in connection with not only watches but various sporting, entertainment and charitable events that Rolex sponsors, and all of the promotional goods distributed, Rolex’s Crown Design trademark has become extremely well known and famous and 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.”
Rolex’s founder, Hans Wilsdorf, revealed the origins of his famous watch brand during a speech given on July 2, 1958, to mark 50 years of the name: “A genie whispered ‘Rolex’ in my ear.” While you might take Wilsdorf’s story with a pinch of salt, Rolex and its crown emblem have become one of modern history’s most recognizable brands and iconic logos.
