— Jessica Gutierrez Alm, Attorney

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This is Fashion Santa.

Or at least it was until recently. Fashion Santa is a role that originated with model, Paul Mason and Toronto’s Yorkdale Mall in 2014. He promoted the mall and a successful charitable giving campaign. Mason continued as Fashion Santa during the 2015 holiday season, and became somewhat of a social media sensation.  But this year, Yorkdale Mall has apparently traded in for a younger model.

Meet the 2016 Fashion Santa: Adam Martin.

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It seems the relationship between original Santa Mason and the Yorkdale Mall declined due to a disagreement over intellectual property rights. Both parties claim to own the trademark rights to FASHION SANTA.  Yorkdale filed a trademark application in the Canadian Patent Office for FASHION SANTA on December 8, 2015.  On April 21, 2016, Yorkdale filed a U.S. trademark application claiming priority to their Canadian filing date.  A few weeks after Yorkdale’s first filing, Mason filed an application for FASHION SANTA in Canada on December 21, 2015, and an application in the U.S. on December 22, 2015.

Both parties claim November 2014 as the date of first use on their Canadian applications. Presumably, they are referring to the same use, but the applications are for different categories of goods/services.  Yorkdale filed its mark in both countries for advertising services and charitable fundraising services, while Mason filed his marks for use with a variety of goods, as well as modeling services and charitable fundraising. With both parties claiming ownership of the same mark stemming from the same use, registration and rights in this case may come down to contractual language governing the parties’ relationship. Hopefully they can reach an agreement, and Fashion Santa doesn’t end up in fashion litigation.

  • James Mahoney

    I don’t know how things work in Canada, but if it’s similar to the US:

    –if Mason’s contract with Yorkdale was an explicit work-for-hire, and
    –if Fashion Santa was Yorkdale’s idea (meaning that they cast Mason as Fashion Santa as opposed to hiring a Fashion-Santa character Mason previously created and performed),
    –then Fashion Santa gave Yorkdale a trademark for Christmas.

    Fortunately for one of them, I’m not the guy deciding the issue.