The USPTO (U.S. Patent and Trademark Office) rejected Rolex Watch U.S.A., Inc.’s April 2019 application to register “MILSUB” as a trademark.
According to FashionLaw.com, the trademark was rejected because of its similarity to watch brand Mark Kiger’s existing registration of the term. By November 2019, Rolex lawyers were officially trying to obtain Kiger’s registration. The basis of the cancellation proceeding was that it maintains common law rights in the mark that predate Kiger’s rights/registration, as consumers and the media refer to the two dive watch models that it crafted for the United Kingdom Ministry of Defense in the 1970s as “MilSubs.”
The Rolex Submariner Milsubs were produced in three references (Ref. 5513, 5517, and double-stamped 5513/5517) and delivered to the UK military in the 1970s. The Rolex Ref. 5514 COMEX is also considered a Milsub, though, the real ones were made specifically for the Royal Navy.
The main issue for Rolex’s rejection of both the registration and cancellation of the existing registration is that Rolex has not been using this term on new products and that they never even used it on the past models — instead, it was always consumers who gave it that name. That did not stand up and the final decision of the TTAB (Trademark Trial and Appeal Board), made on September 5, 2023, was that Rolex’s request for cancellation of the existing trademark was denied.
“The TTAB denied Rolex’s Petition to Cancel because it did not establish rights sufficient to support a Section 2(d) claim since it “has never used the MILSUB mark, and the public uses of the term MilSub were not in connection with any ongoing trade engaged in by Rolex, which means the public uses did not create enforceable rights owned by Rolex,” according to FashionLaw.com.
You can see each step of the lengthy legal process (from 2019 until 2023) at the USTPO here.
Photo by Professional Watches.