Image: Alexi Lubomirski/Kensington Palace
Last week, Prince Harry and Meghan Markle abruptly announced that they would be “step[ping] back” from their role as senior royals, opting out of funding from the royal family (as it is formally titled, the “Sovereign Grant”), and apparently even considering becoming expats. Their public statement issued on January 8 also indicated they intend to “work to become financially independent,” no longer accepting money from the royal family, and explore earning their own income—something they were prohibited from doing as royals.

In the days following the announcement, much was made over the couple’s recent trademark filings. The Daily Mail reported that they “trademarked over 100 items from hoodies to socks,” and interviewed a “retail expert” who claimed the mark could generate revenues upwards of £400 million. Women’s Wear Daily suggested that such rights could be the basis for Harry and Meghan to build a “billion dollar brand.” Even CNN pointed to the trademark filings as a mechanism for the duo to become “financially independent.”

The royal trademark fuss is the result of two trademark applications that were filed by reps for Harry and Meghan back in June 2019, initially in the UK, but ultimately, as they neared the six month deadline to extend those applications internationally through the Madrid Protocol, a system that facilitates the registration of trademarks in multiple jurisdictions around the world, they did just that, and extended the applications in order to seek rights in Australia, the United States, Canada and the whole of the 28-member European Union.

The applications are for “SUSSEX ROYAL” and “SUSSEX ROYAL THE FOUNDATION OF THE DUKE AND DUCHESS OF SUSSEX,” and the scope of both filings is broad—they cover goods and services in classes 16 (paper goods and printed matter), 25 (t-shirts, clothing and other wearable merchandise), 35 (campaigning and marketing for charitable services), 36 (financial services related to charitable fundraising), 41 (education and cultural services), and 45 (social care services).

Despite the apparently wide scope, the trademark applications tell a pretty specific story—Meghan and Harry intend to use their royal name in connection with a charitable foundation. The paper goods and wearable merchandise cited in the applications are more likely to align with museum t-shirts and notebooks than the “global power brand” that the Daily Mail and other outlets have suggested. A charitable endeavor aligns with Harry and Megan’s public statement, in which they stated they looked forward to the “launch of our new charitable entity,” and with other existing projects, such as the clothing line that Meghan launched with non-profit organization Smart Works in September 2019, and Harry’s veteran-centric Invictus Games endeavor.

The “why now?” aspect of the royals’ filings is slightly less obvious. However, certain legal protections that are available exclusively to royals appear to shed some light on why the couple opted to lean on a standard trademark filing at this stage.

Consider the handful of unique protections that are afforded to royals under United Kingdom law in exchange for their “official duties.” In particular, the Trade Descriptions Act of 1968 makes it a civil offense to “in the course of any trade or business, give, by whatever means, any false indication, direct or indirect, that any goods or services supplied by [a non-royal individual are] supplied to or approved by Her Majesty or any member of the Royal Family.”

Meanwhile, the UK Trade Marks Act restricts the use of royal names– or marks invoking the royal family, including names of royals or “words, letters or devices – that are likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorization” are explicitly (specifically, in Section 4 (1)). As for the registration of royal marks, that is prohibited unless it appears to the registrar that consent has been given by “Her Majesty or, as the case may be, the relevant member of the Royal family.”

Harry and Meghan certainly knew that their proposal to vacate their posts was unprecedented and could significantly alter their status as royals, and thus, affect the legal protections that come with that status. As such, filing for trademark registrations (a brand protection mechanism available to everyone) is one way to ensure that they are able to protect their name going forward in lieu of having other, special statutes in their favor. After all, neither trademark law in Canada nor in the U.S., two locales where the royals are suspected to establish residence, maintains the same level of “royal protections” as the UK does.

Interestingly, Harry and Meghan’s UK trademarks applications were filed in June 2019, while the couple remained entrenched in their duties as royals, and so, the applications seamlessly passed through the examination stage to the next step of publication. It is possible that if they had filed for “Sussex Royal” after denouncing their status as “senior” royals, the marks would have faced a different outcome.

Additionally, in filing the UK trademark applications when they did, the couple were able to cement their marks in the UK and the EU before another form of protection afforded to them as royals may be taken off the table: the Paris Convention. A treaty by which many countries, including the U.S., UK, and 175 others, enforce each other’s intellectual property obligations, the Paris Convention requires that, among other things, signatories refuse to register as trademarks certain armoral or heraldic insignia (ones most often tied to royalty) of other signatory countries.

Still yet, Harry and Meghan’s extension of their trademark applications into the U.S. has likely enabled them to skip an integral step of domestic registration: proving actual use of the marks in commerce by providing an example of such use(s). While UK trademarks are required by law to be used in commerce within five years of their registration, applicants are not required to provide the UK Intellectual Property Office with specimens reflecting  such use as a prerequisite to registration (as is the case in the U.S.). If a party does not use his/her registered mark during the five year window, only then will the mark be vulnerable to an invalidation action.

As it stands now, the couple will be able to register their applications to the U.S. Patent and Trademark Office’s registry without having to provide proof of use for at least five years. This will allow them to maintain broad protections while they develop their charitable business—and perhaps seek out other avenues to facilitate their newfound financial independence, such as fashion partnerships and film deals, if media reports are to be believed.

There is also, of course, the defensive angle to the filings. Last week in the midst of the #Megxit mess, it became clear that others are, in fact, looking to bank on the appeal of the young royals. For instance, at least one third-party filed an application for “Sussex Royal” for use on “a range of goods including beer and jewelry.” Given the filing date of the subsequently-lodged “Sussex Royal” trademark and the priority date held by Harry and Meghan’s official filings, an opposition would probably be easily won by the royals when they inevitably challenge that seemingly unaffiliated mark.

Overall, do not expect to see the couple launch the standard celebrity merchandising marketing campaign that so many have predicted. Instead, given that the royals were savvy enough to establish a  broad base of potential protections for themselves, including how and when they did, do expect them to use those marks defensively to prevent others from trying to do the same.

Jessica Meiselman is a tech and IP focused lawyer. She has been published in Vice, Pitchfork, Vanity Fair, Artsy, Complex and Fader.