Welcome to Wrexham
You may have heard that actors, Ryan Reynolds and Rob McElhenney, bought a Welsh Football club in 2020: Wrexham AFC. The owners, the town, and the club, are the subjects of a popular docuseries, Welcome to Wrexham.
You may not have heard that the actors' entity, The R.R. McReynolds Company, LLC, owns four trademark registrations and applications at the USPTO. See https://nypost.com/2023/04/15/ryan-reynolds-trademarks-wrexham-name-to-build-brand-globally/. The registrations and applications are:
U.S. Registration No. 6848916
U.S. Registration No. 6848915, WREXHAM IS THE NAME, for a variety of goods and services
U.S. Registration No. 6848916 (see logo) for a variety of goods and services
U.S. Serial No. 97606955 (the '955 Application), WELCOME TO WREXHAM, for "entertainment services in the nature of an ongoing television documentary series in the field of sports, drama, and comedy" in Class 41
U.S. Serial No. 97817594 (the '594 Application), WELCOME TO WREXHAM, for a variety of goods and services
The applications giving rise to registrations were filed on March 4, 2021 (and claim priority to November 17, 2020). The two applications were filed under Section 66(a) (i.e., the Madrid Protocol).
The '955 Application was filed on September 26, 2022 under Sections 1(a) and 44(d). The '594 Application was filed on March 1, 2023 under Sections 1(b) and 44(d). Both applications claim priority to September 2, 2022.
Recall, U.S. based applicants must file trademark applications under either section 1(a) (i.e., a trademark that is currently used in connection with the identified goods/services) or section 1(b) (i.e., a trademark that the owner intends to use in connection with the identified goods/services). In addition to sections 1(a) and 1(b), non-U.S. based applicants can file applications under sections 44(d), 44(e), and 66(a). When an applicant files an application under section 44(d), the applicant owns a foreign application that is currently pending and wants the foreign application to establish priority for the latter-filed U.S. application. When an applicant files an application under section 44(e), the applicant owns a foreign registration and wants the foreign registration to establish rights for the latter-filed U.S. application.
An application filed under section 66(a) is similar to an application filed under sections 44(d) and 44(e): the applicant owns a prior-filed application or registration in a foreign jurisdiction. Among other things, section 66(a) applications differ in that the applicant files an international application through the trademark office where its initial application(s) and/or registration(s) is held (Office of Origin). The applicant may request protection in other jurisdictions. Each jurisdiction designated will examine the request for extension of protection as a national trademark application under its domestic laws.
By contrast, applicants that file applications under sections 44(d) and 44(e) file directly in each foreign jurisdiction in which the applicant wishes to establish rights.
Although the actors are U.S.-based applicants, their entity, The R.R. McReynolds Company, LLC is not. It is a limited liability company in the United Kingdom. It owns both of the Registrations identified above. The Registrations were applied for pursuant to the Madrid Protocol based on registrations in the United Kingdom. Two benefits of filing under the Madrid Protocol are reduced filing fees and costs by potentially not needing to hire local trademark attorneys in each country (e.g., the United States in this example); and the foreign applicant (i.e., The R.R. McReynolds Company, LLC) can register the marks based on "intent to use" in the United States.
As for the WELCOME TO WREXHAM applications, the applicant did not use the Madrid Protocol. The applicant likely filed the '955 Application under section 1(a) because the docuseries was airing in the United States as of the filing date.
The applicant likely filed the '594 Application under sections 1(b) because the various goods/services that were identified were not sold/offered for sale in the United States as of the filing date.
Both applications were also filed under section 44(d) because the U.K.-based application had not yet registered. Had the U.K. application already registered, the applicant would have filed under section 44(e).
For those wondering why the first two applications (which are now registered) were filed under section 66(a), whereas the pending applications were filed under 1(a)/(b) and 44(d), the decision likely turned on the geographic use of the respective marks and the goods/services. Distribution of the docuseries WELCOME TO WREXHAM (and related merchandise), might be more limited than the use of the club's badge (the '916 Registration) and the title of a popular club song, WREXHAM IS THE NAME. Results from a cursory international trademark search support this. See https://branddb.wipo.int/en/quicksearch?by=brandName&v=&rows=30&sort=score%20desc&start=0&_=1681704762368, accessed April 16, 2023 {search "Wrexham"}. The relevant database shows trademark records in the United States and Canada for WELCOME TO WREXHAM. By contrast, the same database shows results in several additional countries for the other two marks. The Madrid Protocol is often attractive to trademark owners who want to register their marks in a number of countries.
Whether you are based in the United States or abroad, if you want to pursue trademark protection internationally, be sure to consult with a trademark attorney about strategies.
