Tag: Beyonce trademark

Beyoncé Fends Off Challenge to Daughter’s “Blue Ivy Carter” Mark From Owner of “Blue Ivy” Mark for Event Planning

In 2012, BGK Trademark Holdings, LLC applied for registration of the trademark BLUE IVY CARTER with the consent of Blue Ivy, daughter of Beyoncé Giselle Knowles-Carter and Shawn Corey Carter (Jay-Z), but was met with opposition from the owner of the mark BLUE IVY for event planning. In dismissing the opposition, the Trademark Trial and Appeals Board (TTAB) rejected the Opposer’s claims of likelihood of confusion, lack of bona fide intent to use the mark in commerce, and fraud. Morales v. BGK Trademark Holdings LLC, Opposition No. 91234467 (T.T.A.B. 2020).

BGK Trademark Holdings, owned by Beyoncé—actress, singer, and songwriter—applied for the mark BLUE IVY CARTER for a variety of goods and services, such as fragrances, cosmetics, key chains, audio and visual sound recordings, banners, hair accessories, product merchandising, entertainment services, and more. Veronica Morales, owner of the lifestyle event planning company “Blue Ivy,” filed an opposition asserting, in part, likelihood of confusion with her BLUE IVY mark, which she has used for event planning services since 2009 and registered in 2012.

The Lanham Act prohibits the registration of a mark that (1) resembles an already registered mark previously used by another and (2) that when used in connection with the goods of the applicant, is likely to cause confusion, mistake, or deception. To succeed, Morales needed to show that use of the BLUE IVY CARTER mark by BGK would cause confusion as to the source or sponsorship of the goods and services.

The TTAB found there was no evidence suggesting the marks were related in such a way as to give rise to confusion. Considering the oft-cited DuPont factors, the TTAB found the second and third factors—the similarities between the goods, services, and the similarity of trade channels—weighed heavily against a finding of confusion. Morales’s mark is registered for “event planning and management for marketing, branding, promoting or advertising the goods and services of others.” BGK’s proposed mark is directed to many different goods and services, with the most similar being “product merchandising for others” and “entertainment marketing services, namely, marketing, promotion and advertising for recording and performing artists.” The TTAB found that although these services were similar, there was no evidence they were related in a manner that would cause confusion. Additionally, the TTAB found no evidence the goods and services travelled in the same channels of trade, specifically stating that online marketing does not establish similar trade channels and does not prove a likelihood that consumers would confuse similar marks. With respect to the strength of the mark, the fifth DuPont factor, the TTAB found this factor neutral because while BLUE IVY is conceptually strong, there was not enough evidence to determine commercial strength. Therefore, although the marks were similar in connotation and impression under the first DuPont factor, the other factors tipped the scales in favor of finding no likelihood of confusion between the marks.

Morales also challenged applicant’s bona fide intent to use the mark in commerce as of the filing date of the application. Trying to convince the Board there was a lack of bona fide intent, she argued BGK failed to produce documentation supporting a bona fide intent despite requests to produce documents in discovery. The TTAB was not persuaded because Morales had failed to pursue a motion to compel when BGK objected to the requests for production. Next, relying on BGK’s abandonment of an earlier trademark application for the same mark in which the company failed to file a Statement of Use, Morales argued BGK’s current application suffered from a lack of bona fide intent to use the proposed mark. The TTAB, however, determined that a prior abandoned application is not, by itself, enough to support a finding of bad faith conduct. Finally, Morales relied on statements made by Jay-Z in in a Vanity Fair magazine article where he stated that they sought a trademark for Blue Ivy’s name for a line of baby clothes “merely so no one else could,” to show lack of bona fide intent to use the mark in commerce. Rejecting that argument, the TTAB determined those statements could not be used to show lack of bona fide intent because Jay-Z is not legally connected to BGK and the statements in the article were not direct quotes. Finding no lack of bona fide intent, the Board likewise rejected Morales’ fraud arguments.

As a result, there was no bar to Beyonce and BGK securing trademark registration for their BLUE IVY CARTER mark.

COPYRIGHT © 2020, STARK & STARK
ARTICLE BY Gene Markin of  Stark & Stark
For more articles on trademarks, visit the National Law Review Intellectual Property section.

BLUE IVY CARTER: What to Get a Child Who Has Everything? A Trademark Registration.

An article about Trademark Registration and Blue Ivy Carter by Geri L. Haight of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. was recently published in The National Law Review:

Since the birth last month of their first child, Blue Ivy Carter, Beyoncé and Jay-Z are no doubt experiencing the typical joys of first-time parenthood.  Those first looks, smiles and coos.  But they are struggling with at least one parenting issue that most of us don’t have to worry about:  trademark protection for their baby’s name.  Beyoncé’s company, BGK Trademark Holdings, LLC, recently filed an intent-to-use trademark application for the mark BLUE IVY CARTER for use on a wide range of goods and services, including fragrances, key chains, baby strollers, jewelry, mugs, hair accessories, balls, product merchandising services and entertainment services, to name a few.  But Beyoncé was not the first applicant for the BLUE IVY CARTER trademark.  Two other entities beat her to the Trademark Office.

First, just days after Blue Ivy’s birth, Joseph Mbeh, a clothing designer, applied to register the mark BLUE IVY CARTER NYC in connection with infant, toddler and junior clothing.  The Trademark Office acted with unusual promptness in issuing an office action refusing registration of the proposed mark.  Though it typically takes the Trademark Office approximately 3-4 months to act on a newly filed application, it took only 14 days for it to refuse registration of the applied-for mark.  The examiner refused registration based on Section 2(d), citing a likelihood of confusion between the mark BLUE IVY CARTER NYC and a prior registration for the mark BLUE IVY for retail store services (a registration issued to Blue Ivy, LLC, a Wisconsin-based company, in August 2011, several months before the birth of Blue Ivy).  In so doing, the examiner concluded that the BLUE IVY and BLUE IVY CARTER NYC marks are similar because they both contain the words BLUE IVY and further noted that the applicant’s proporsed goods (clothing) are “closely related” to the registrant’s retail services.  The examiner also refused registration based on Section 2(a) on the grounds that the proposed mark falsely suggested a connection with Blue Ivy Carter, who the examiner described as a “famous infant” (who, at the time of the office action was a few weeks old).  The examiner proceeded to refuse registration based on Section 2(c), given that the proposed mark includes the name of a particular individual, Blue Ivy Carter, who the examiner characterized as a “famous individual, who is so well known that the public would reasonably assume a connection” between the baby and the trademark applicant.  Because Blue Ivy Carter is a minor, the applicant would need the consent of her parent(s) in order to overcome the refusal.  In response to the office action, and apparently recognizing that he may be unable to obtain the necessary consent from Blue Ivy Carter’s parent, Mbeh expressly abandoned his trademark application.

On January 20, 2012, another applicant, CBH By Benton Clothier LLC d/b/a Creative Business House LLC, applied to register the trademark BLUE IVY CARTER GLORY IV for use in connection with a wide range of fragrances and skin care products.  According to Creative Business House’s website, the company can “register[] your business, trademark[] your brand, create[] your samples & patterns and market your line to buyers”.   Interestingly, Creative Business House’s application asserts that the applied-for mark is already in use and claims that it first started using the mark in connection with the applied-for goods on February 14, 2011, approximately 11 months before the birth of Blue Ivy Carter.  Nonetheless, the trademark examiner (again acting with extraordinary promptness) issued an office action on February 2, 2012 refusing registration of the mark based on Sections 2(a) and 2(c) grounds (for the same reasons given in connection with the BLUE IVY CARTER NYC application).  The office action does not address the issue of the applicant’s alleged date of first use of the mark and, notably, does not include a likelihood of confusion refusal based on the prior registration of the BLUE IVY mark for retail services.

In light of these applications, what was Beyoncé to do but file her own trademark application in order to protect her baby’s name from third-party use?  It will be interesting to see if the previously registered BLUE IVY mark is cited as a bar to registration under Section 2(d) of the proposed BLUE IVY CARTER mark, as it was in connection with Mbeh’s application to register BLUE IVY CARTER NYC.  After all, using the examiner’s reasoning in refusing the register Mbeh’s mark, both BLUE IVY and BLUE IVY CARTER include the words BLUE IVY and are used/proposed to be used for closely related services/goods (Maybe Beyoncé should have conducted a trademark search before selecting her baby’s name so as to avoid this potential obstacle to registration!).  It will also be interesting to see whether the applicant for the BLUE IVY CARTER GLORY IV mark will be able to establish rights to the mark dating back to February 14, 2011 (as alleged), if challenged to do so. We hope that Beyoncé and Jay-Z were able to secure the <blueivycarter.com> domain name, which was registered using a privacy service on January 8, 2012, the day after Blue Ivy was born.  Notably, <blueivycartergloryiv.com> was registered on January 30, 2012 to an LCREALTY of Chicago and <blueivycarternyc.com> was registered on January 10, 2012 through a privacy service.

Ah, there is so much for new parents to think about these days….

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