Elizabeth Chan came out victorious in a trademark battle with Mariah Carey — but it was not a fight she ever wanted to have.
"It was a very difficult year to go up against someone with endless resources and you're just fighting for status quo. You're just fighting for your career," Chan tells Yahoo Entertainment of blocking Carey's "Queen of Christmas" trademark attempt. "She would have eviscerated and erased my legacy that I had worked for from nothing."
Having a career as a Christmas recording artist is something Chan sank everything she had into. The singer/songwriter loved Christmas music since she was a child, growing up with not a lot of presents under the tree in New York City. While she tried to give music a go as a teen, "the music industry was pretty brutal," she says. "They said, 'Asian artists don't make it in America. There's not a place for you in this business.'" Instead, she forged a stable and successful media career. But that musical calling remained strong. In her early 30s, she took the leap and pursued her dream, literally "counting change" to pay the bills while she found her footing in the industry.
"I really had to like throw it all away and start over," Chan says of leaving her media exec job. "It was very humbling … but well, well worth it. I'm very proud of my career."
Over the last decade-plus, Chan established herself as the world's only full-time Christmas recording artist. That's the only genre of music she makes — and she's released 12 albums in 12 years, the latest being 12 Months of Christmas. The independent artist-producer, is currently on Mediabase's top 10 holiday chart — behind just the Backstreet Boys and Pentatonix — for her song "Merry Merry." Hers is a family business with her husband, Andy Fraley, designing her album covers, and elder daughter, Noelle, whom she dubbed the "Princess of Christmas," singing with her mom, appearing in music videos and writing music.
As for the title of "Queen of Christmas," which was at the heart of the trademark dispute with Carey, this isn't a title Chan anointed herself. It was given to her — in 2014, after her second Billboard hit — by the media. "When I walk into a radio station, it's, 'Here's the Queen of Christmas. She only does Christmas music!'" She used Queen of Christmas as the title for her 2021 album, as well as for a spoken word track on that album. It was while doing legal prep to release that album that her entertainment attorney flagged that Carey's had filed a trademark application, in March 2021, for "Queen of Christmas."
Chan's "The Queen of Christmas" track:
There's a misconception about the trademark dispute. Chan wasn't trying to win the trademark for herself. She also wasn't trying to prevent Carey — whose "All I Want for Christmas Is You" is an undisputed holiday favorite — from using it. She opposed Carey owning it — as well as "QOC," "Princess of Christmas" (her daughter Noelle's nickname) and "Christmas Princess," which Carey also attempted to trademark — because she doesn't think one person should have exclusive and permanent rights to the title. After all, singers Darlene Love and Brenda Lee are also referred to as the Queen of Christmas, respectively. Further, Carey's trademark bid was far-reaching — not just in music. It included use on hundreds and hundreds of products including perfume and nail polish, but also dog leashes, cake mixes, corkscrews, fruit juices, sunglasses, backpacks and … coconut milk, to name a few.
If Chan didn't dispute the trademark and Carey won, she would have had to remove mentions of "Queen of Christmas" from her website, social media and promotional materials. She could have potentially been forced to rename her album of that name, released after Carey filed for the trademark. Even media outlets referring to Chan as Queen of Christmas in articles could have been hit cease and desist requests.
"It's the erasing of anybody else except for one person. The consequences were really, really serious," Chan says. Not to mention, "I've had a real career being known as this. I wasn't trying to it take away [from Carey, Love, Lee or anyone else]. It was just — I was also given that [title] like anybody else."
So, "I had to be brave enough to stand up," she says of taking on Carey. "It was so David and Goliath. I mean: I could not be a smaller David in this. And it was so scary. But I was the only one who was willing and able at the last minute."
Looking back, she admits she had "zero true understanding" of what it meant to take on the fight. After speaking with "dozens and dozens of attorneys," there "was no one that was willing to help me. Trademark law is not something that's done on contingency. There's no windfall of winnings. It's not like that. You're just fighting for status quo." She was told the retainer to fight just one trademark was $250,000 — and Carey filed four that Chan sought to oppose. She was looking at laying out $1 million plus $40,000 in filing fees — just to start.
With 48 hours left to file an opposition, and a spreadsheet of lawyers who already said no, Chan threw a Hail Mary, reaching out to a lawyer friend, Kevin Prussia, whom she attended undergrad with. After explaining the situation, she recalled him telling her, "Liz, you're never going to see the end of this. She will either bankrupt you for trying [to stop the trademark] or cease and desist you if you don't fight."
He asked for 24 hours, made a plea to his colleagues at the law firm WilmerHale, and called Chan back the next day to say they would represent her — for free. Her opposition was filed on Aug. 11.
Chan says what was at stake was the "culture of Christmas. Because Darlene Love and Brenda Lee," neither of whom she has met, "wouldn't have been able to afford this [expensive legal battle either] and their legacies would have been done, too. Also the culture that made me the Queen of Christmas — the culture that made anybody the Queen of Christmas — is the culture that we should leave behind for the future. We don't own it."
She continues, "I needed to demonstrate to the world that Queen of Christmas is a generational thing. It's something that changes — from Brenda Lee to Darlene Love to Mariah to me. In the future, there might be a different Queen of Christmas that isn't even born yet. He or she. Why would we steal that from them? You know we don't live forever, right? Even Queen Elizabeth can't be a queen forever."
So, "I had to be the one to stand up, and I was the smallest one," she says. "I could not let this happen to the future of the genre that raised me. I could not let this be ceded to a single person for all the wrong reasons."
Then, suddenly, Carey's trademark attempt came to an end on Nov. 15. While over the summer Carey made several attempts to extend the proceedings — a legal tactic that can be costly, especially if you're going up against someone with limited resources — the date for her to file a response to Chan's opposition came and went. Carey's legal team never filed, abruptly abandoning her request — and permanently. In its announcement of Chan's victory, WilmerHale called the dispute a case of "classic trademark bullying," with Carey "trying to monopolize" a title used by many different people.
Chan says she "cried" when she found out it was over because she was bracing for a court battle. "We had trial dates … into 2024. [Carey] kept extending, extending the trial milestones."
She says she wrote songs for the lawyers representing her, including "The Giver," as thank yous, saying they "understood Christmas at the core." Chan says she could "never repay them," and adds, "I just want to emphasize that I was protected by good, good people."
Throughout this ordeal, she knows people have been asking, "Who's Elizabeth Chan?" She's well aware that she's not as famous as Carey. That was never her goal in giving up her post as a media exec for Christmas singing career.
"Christmas music, unlike other genres, is a passive format," she says. "It's not like Top 40 where you're following Taylor Swift as she's doing stuff all year around," she says. "So people are like: 'Why haven't I heard you before?' You actually have heard my songs," but singer/songwriters of many holiday songs aren't often aren't well-known to the public or it's decades before their songs become famous. "People just know the music — and my goal is to make it about the music... I never wanted to be rich or famous. I just wanted to do what I love."
Chan's business is a family one involving her husband and daughters Noelle, whom she dubbed the "Princess of Christmas," and Eva:
Chan — who has released more than 1,200 Christmas songs — says she has "two dozen songs playing around the world at any given time. During the Christmas season, they play in maybe 100,000 stores and retail places. I get a kick out of walking around and hearing my music. Fans will message me, 'I heard you at J.Crew.' … I am not your average artist. I'm not Taylor Swift. I'm like a shooting Christmas comet that's been caught at, like, Pottery Barn. I'm in every store in America. My business is just different."
With the trademark fight behind her and Christmas around the corner, "I have 30 days until my season's over, I'm [firing] on all cylinders right now." And she wants to shift the focus back to that — and sharing "my passion, my purpose."
She says her career was "hard-earned. I got a lot of nos. Everyone in this business wants to tell you what's impossible … and then you think that's the doctrine, but it's not. Everyone told me, You'll never win this trademark thing. You should find another job. Your career is over.' Everybody always wants to tell you what's not possible. Sometimes people just don't know."
She adds, "My love for what I do is so sincere and I am so proud of it."