“Keep Calm and Carry On:” A Look Into The Slogan’s Trademark Formation
“Keep Calm and Carry On” is a slogan with its roots dating back to 1939. Formed by the British Government during the Second World War, the Ministry of Information was responsible for the publicity and propaganda surrounding Britain’s involvement in the war. The Ministry of Information created a number of different posters promoting public moral; among these posters was a bold red colored image bearing the phrase “Keep Calm and Carry On” below the symbolic crown of King George VI (collectively “the Mark”). The Ministry of Information had a plan in place to release this poster upon the invasion of Britain by Germany, but since a British invasion never occurred, the poster was never officially released to the public. While most of the posters were destroyed at the end of the war in 1945, in 2001, Stuart Manley, co-owner of Barters Books Ltd. found one of the posters while sorting through a box of used books. Mr. Manley hung the poster by the cash register in his bookstore where it garnered a lot of interest from customers. After demand for the poster kept coming in, Mr. Manley ordered 500 reproductions and began selling them out of his store. Soon after, a number of other companies followed suit and started producing a variety of products bearing the Mark.
Mr. Manley never pursued a trademark registration for the Mark; instead he had only sought to be credited by the many manufacturers for his “discovery.” Fast-forward ten years; ex-TV producer Mark Coop buys a copy of the poster from Mr. Manley at Barters Books Ltd. Following this purchase, Mr. Coop established Keep Calm and Carry On Ltd. and an online business selling products bearing the Mark. Then Mr. Coop tries to register the Mark in the United Kingdom (UK) but is denied the registration. Subsequently, Mr. Coop successfully obtained a Community Trade Mark in the European Union (EU) trademark office (the Office for Harmonization in the Internal Market) for the Mark.
The exact reasons for the denial of the UK trademark registration are not publically known; however, the reasoning for the EU allowing the trademark registration was hinted at in an article written by Dale Campbell on trademarktribe.com. Dale Campbell, European Trademark Attorney and director of Trademark Tribe in Newbury stated, “A trademark registration grants ownership of the brand name for the goods and services which allows them to protect their goodwill and to take action should others begin using the name without their permission.”[1] He went on to say “When another business sells your goods without you having control of the quality and the use of the brand, they harm your business by stealing your potential customers and could damage your brand by selling inferior goods.”[2] He concluded, “Mr. Coop developed goodwill in the brand and the registration as a trademark has legitimately allowed Keep Calm and Carry On Limited (“Keep Calm and Carry On Ltd.) to protect this goodwill, which is the essential function of a trademark.” Keep Calm and Carry On Ltd.’s registration covers the use of the Mark on everything from kitchen utensils, leather and paper goods to clothing, footwear and other textile goods.[3]
There is one company that holds a registration to the Mark in the UK. The Keep Calm and Carry On Beverage Company of London was able to register the Mark domestically in the UK for beers, alcoholic wines, spirits, liqueurs, common metal and their alloys, distribution and storage of goods, transport of goods and distribution services, condoms, and contraceptive preparations.[4] It is speculated that the reason Coop’s UK trademark claim failed was because the Beverage Company registered the Mark for “Common metals and their alloys” (which included key rings) first, thus the domestic mark for this class was already claimed.[5] As a result, the Beverage Company could enjoin Coop from selling any infringing products in the UK. In order for Coop to obtain protection on other uses of the Mark, he would have had to amend his application, which he decided not to do and instead go beyond the UK and register in the EU.
With the Beverage Company first registering the Mark in the UK followed by Coop registering the Mark in the EU, both parties are able to use the Mark in the UK. This results in consumer confusion, which leads to the question should Coops EU registration be challenged? The IPKat, a multi-authored blog focusing on IP issues in the UK and Europe, offered this analysis:
In determining if “the Community trade mark registration could be challenged on the grounds that the slogan (i) had been widely used in the UK for some years and (ii) would not be recognized, at least in the UK, as indicating trade origin. Provisionally the Kat thinks that there is no challenge per se under (i), since prior use is not a ground on which a Community Trade Mark can be nullified unless it establishes that the mark is non-distinctive, descriptive or suffers from some other defect which would prevent the relevant consumer from associating it with the owner’s goods or services. (ii) however — if it can be substantiated — could be fatal to the registration.”[6]
Under this analysis, Coop’s future does not look calm. If and when the challenge is raised, it will likely be determined that Coop’s Community Trade Mark does not indicate trade origin, at least in the UK, and therefore must be cancelled. Aside from the ongoing legal battle over the Mark, other concerns are the implications allowing a private entity to own the Mark as a trademark and what implications would result if such the Mark were in the public domain free for all to use?
The interesting dynamic on this issue is that in essence the trademark is the product, and this trademark is registered in multiple countries, to multiple parties being governed by different laws, thus any analysis requires a variety of perspectives. To begin, a few of the policies surrounding trademark protection are (1) to serve as a proxy for goodwill; (2) protect the consumer; (3) identify source of the goods; and (4) protect the quality of the product. Under Section 45 of the Lanham Act a “trademark” includes any word, name, symbol, or device, or any combination thereof– (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.[7] To reiterate, in this case the trademark is the product, and the only other area of trademark law that has a similar dynamic is scents/fragrances.
To obtain trademark protection for a scent, the word, name, symbol, or device, or any combination thereof” must be used in trade to identify and distinguish goods or services and to indicate source.[8] Applying this principle to the Mark would show the weakness in Coop’s registration of the Mark. Coop’s use of the Mark meets the standard of being used in trade to identify goods in that it identifies goods associated with British culture, but it does not serve to indicate a particular source of the goods. The combination of the slogan, crown and color of the image all identify the product sold as being a novelty of British culture and there are few, if any consumers that recognize that most of the “Keep Calm and Carry On” products come from Keep Calm and Carry On Ltd. Further, there are a number of parodies of the Mark sold all over the world, for example “Keep Calm and Chive On”, “Keep Calm and Let it Go”, “Keep Calm and Dance On”.
Another implication of the Mark is that currently the Beverage Company holds the registration in the UK and Coop holds the registration in the EU (which encompasses 27 countries including the UK). The problem is which company can produce which products where and what impact does this have on UK consumers? With Europe being a very easily traversed region, a consumer could buy a “Keep Calm and Carry On” keychain in London and it would be made by The Keep Calm and Carry On Beverage Company of London, but then hop on the EuroStar train to Paris, France buy an identical keychain and it would be made by Coop’s Keep Calm and Carry On Ltd. In neither case would the consumer be able to identify the source because in both cases the image on the keychain is the source identifier, thus the primary purpose of trademark law is not served in regards to the Mark in this case. National registrations are not supposed to interfere with a EU registration but here it appears it does. This case not only creates waves across the EU, but due to our treaty obligations with the EU, waves are also created in the Unites States.
Picture by Koka Sexton
In the U.S., rights pertaining to a mark are created when the mark is used in commerce and registered with the U.S. Patent and Trademark Office, or simply just by use in commerce.[9] In contract, most other countries do not give protection unless the mark is registered with a government entity. The Paris Convention, since 1925, has required member nations to protect well-known foreign marks, which in this case would include the Keep Calm Mark. Under The Paris Convention, use in at least one foreign country when the mark has not become subject to protection in the United States, would still grant the foreign trademark owner protection in the U.S. Regardless, in this case, Coop registered the “standard character mark” in the U.S. and due to his website keepcalmandcarryon.com being accessible in the U.S., Coop has met the use requirement under U.S. law.[10] A “standard character mark” will provide broad rights to the registrant, namely use in any manner of presentation. Unfortunately for Coop, just like in the UK, he is not the only one with the right to use the Mark in the U.S., the Beverage Company also owns a registration on the same products as in the UK, except in the U.S. Coop has metal goods which includes key rings.[11]
Another potential hurdle for Coop is his sales of parodies off his website. Parodies and spoofs of the slogan abound, as can be seen in this Buzzfeed article. By him selling parodies along side the Mark is causing the Mark to become diluted. Dilution is “the watering down of the potency of a mark,” causing a “loss of distinctiveness,” as a result of which “a particular mark signifying ‘a single thing coming from a single source’ becomes instead… [an] awareness that the mark signifies various things from various sources.”[12] In her paper, Sara Stadler Nelson argues that in its original conception, the dilution doctrine was intended to preserve the “uniqueness” of a select group of highly distinctive trademarks; that unlike “mere” distinctiveness, this uniqueness is destroyed when marks are used to identify a diversity of products; and that acts destructive of uniqueness include those in which trademark owners themselves engage.[13] It is important to note the distinction between merchandising and dilution. Most companies will place their trademark on goods and place them in the stream of commerce, in this case, Coop is placing the Mark and parodies of the Mark on his goods, and placing in them into the stream of commerce from one source, his website. Here, Coop is causing the Mark to become ubiquitous thus not only weakening its use as a trademark, but also blurring the line between his products bearing the Mark, his parody of the Mark and others who sell parodies of the Mark.
Stadler goes on to argue, “when trademark owners make “ubiquitous” uses of their marks they have surrendered their entitlement to a remedy under the dilution doctrine.[14] If a trademark owner has chosen to place a “unique” trademark on products that are “different” (parodies) from the products for which the mark became known to consumers, that trademark may continue to be distinctive, but it has lost its uniqueness—that is, it has become associated not with a particular product, but with a variety of products. Without this uniqueness, “an owner cannot lay claim to the selling power whittling away of which dilution seeks to prevent, and without this selling power, it cannot qualify for a dilution remedy.”[15] If Coop is able to maintain the registration of the Mark in the EU and the US, and he continues to profit off the parodies he is selling from the same site he uses to sell products bearing the Mark, then at the minimum, his remedies for other’s use of the Mark should be diminished. Then to take it one step further, all registration offices that have granted a registration on the Mark, should cancel such registration.
Another concern with the Mark is that trademark offices are allowing a private entity to gain a trademark on a poster/slogan that was created for public benefit. The original purpose of the poster was to boost public moral, and most people understand this aspect, so what policy are we promoting among consumers if a private entity is able to hijack the creation of the government and profit off it. The British government using public tax dollars to fund the Ministry on Information created the Mark; therefore, property of the Ministry should be public property. This poster should have never left the public domain to be monetized by a private company. If nowhere else, in the UK this poster should not be subject to any privatization, and should be available for all to use.
In conclusion, today this poster is popular for its connection to British culture and history, not because some guy registered a trademark on it and sold products bearing the Mark from a website. The Mark does not serve the source identifying function, nor does it serve any other function of trademark law or policy. Regardless of whether Coop was the one to make it popular by plastering it all over Europe, the Mark does not indicate trade origin nor does it represent good will of the distributor. It is merely a common mark that the British people should have access to. The Mark was created using British tax dollars for the benefit of the British people, and should have never been subject to private monopolization. All countries that have permitted the registration of the Mark should cancel their respective registrations.
[1] www.trademarktribe.com
[2] Id.
[3] https://www.tmdn.org/tmview/welcome#
[4] http://www.theawl.com/2011/10/keep-calm-and-carry-on-trademark-fight
[5] http://www.theawl.com/2011/10/keep-calm-and-carry-on-trademark-fight
[6] http://www.theawl.com/2011/10/keep-calm-and-carry-on-trademark-fight
[7] http://www.uspto.gov/sites/default/files/tmlaw.pdf
[8] http://www.inta.org/INTABulletin/Pages/TheStatusofScentsasTrademarksAnInternationalPerspective.aspx
[9]http://digitalcommons.law.lsu.edu/cgi/viewcontent.cgi?article=1301&context=faculty_scholarship
[10] http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4806:746gr8.2.4
[11] http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4806:746gr8.2.4
[12] Sara Stadler Nelson THE WAGES OF UBIQUITY IN TRADEMARK LAW 88 IOWA L. REV.
[13] Id.
[14] Id.
[15] Id.