The “Black Friday” Trademark Controversy

Are German retailers still banned from advertising Black Friday sales?

It was 1967 in Philadelphia when the term Black Friday was first used in the U.S. to describe the post-Thanksgiving shopping madness. The police in Philadelphia were trying to disincentivize people from shopping that day, so they publicized via a newspaper article how crowded, frenzied, and unsafe it would be to join the throngs of bargain hunters. However, many misinterpreted it to mean that retailers were back in the black with profits, which was true, so the police persuasion failed. Black Friday was born.

While Europe doesn’t celebrate traditional Thanksgiving like the U.S., they are quick to recognize a good idea when they see one, and they borrowed the Black Friday phrase for their own holiday advertising. Unfortunately, shopkeepers and retailers in Austria and Germany started receiving cease-and-desist letters and lawsuits whenever they advertised their Black Friday sales. Next up, German-based Twitter and Facebook accounts promoting Black Friday sales were blocked. Google apps got deleted. Even Amazon felt their wrath. They were sued in November of 2017 for using Black Friday on their website.

Can You Trademark Black Friday?

In the U.S., no. We cannot trademark Black Friday. Nor can we trademark phrases like Cyber Monday, Giving Tuesday, or Small Business Saturday. But the USPTO reports that many have tried applying for ownership of Black Friday.

Here’s the tell: context is the key decider. Generic terms for seasons or special days, like Happy birthday, for example, cannot become someone’s exclusive trademark (the Happy Birthday song, however, is another story—watch for that in the next episode of my Weird Royalties Series™.) Phrases that are descriptive are not registrable. However, if Black Friday was the name of a dark, French-roasted coffee or a Goth lipstick brand, then it would qualify. To be trademarked, the term must be a source identifier for a specific goods or services item.

In Germany and Austria, it’s a much different story. Hong Kong company Super Union Holdings, Ltd. registered Black Friday in 2013 as a word mark with the German Patent and Trademark Office (DPMA) for retail services and entertainment services in Classes 35 and 41, which gave this Hong Kong company a monopoly over using the term. They also registered it as a figurative mark with the European Trademark Office (EUIPO) in November of 2015 for Class 35 services under the ownership of Black Friday GmbH in Vienna, Austria This meant Super Union Holdings, Ltd., and their licensee blackfridaysale.de were legally within their right to issue hundreds of cease-and-desist warning letters to German and Austrian companies who were freely using the term Black Friday in their advertisements.

Trademark Ping Pong

The German advertisers fought back. The DPMA received 16 cancellation requests for the Black Friday trademark. In November of 2017, Mr. Simon Gall, the German operator of the website Black-Friday.de obtained an injunction against Super Union Holdings Ltd., which was legally binding. In March of 2018, the DPMA decided it belonged in the public domain. But then the Chinese trademark owner filed an appeal against the decision, resulting in an extension to the prior legal dispute.

In November of 2019, the portal Black-Friday.de filed a new cancellation action against the word mark Black Friday for revocation and non-use of the mark. The term Black Friday 2020 is also under the Black Friday umbrella for usage rules. Because of Mr. Gall’s pending court case, any retailers using a Black Friday discount campaign under the dealer portal black-Friday.de are currently legally protected from warnings sent by Super Union Holdings.

In March of 2020, the German Federal Patent Court canceled the cancellation of the trademark. In other words, this is the current state of the Black Friday trademark in Germany:

• All electronics goods can advertise using the Black Friday trademark in Germany.
• The wording Black Friday is currently now allowed in Germany for any other goods advertising.

However, an appeal may be filed with the Federal Supreme Court against the German Federal Patent Court’s ruling. According to legal-patent.com, ...This trademark battle will be continued, so maybe next year there is another situation.