Ongoing proceedings from 2012 between Beyonce and BLUE IVY Events, an American event planning company owned by Wendy Morales, show the difficulties in making trade mark applications in the USA where no brand currently exists.

Beyonce, like several celebrities, decided to apply to the USPTO to obtain a trade mark registration in respect of her daughter’s full name through her own company BGK Holdings.

The owner of the events company, which is well established and has been featured in Conde Nast, is concerned that the trade marking of ‘Blue Ivy Carter’ will overshadow her company brand and confuse both existing and potential customers. Morales has an accepted trade mark registration under her company’s name.

BACKGROUND

The grounds for Beyonce’s application are that her daughter is a cultural icon, and she expressed intent to use this trade mark for commercial purposes.

Trade marking of the names of celebrity’s children has become increasingly common in order to protect that child’s potential personal brand. The Kardashian family have trade marked the names of many of their children including all three of Kim Kardashian’s children and Khloe and Kylie’s daughters True Thompson and Stormi Webster.

The complication in Beyonce’s case is that the owner of BLUE IVY events filed a notice of opposition arguing a lack of intent on the part of the Carters to actually use the trade mark, and that the trade marking of ‘BLUE IVY CARTER’ is too similar to BLUE IVY which has been trade marked prior to BGK Holdings applying for a trade mark registration.

LEGAL REQUIREMENTS

The significant and relevant requirement for obtaining a trade mark registration according to the USPTO is that you have:

a bona fide intent to use the mark in commerce; that is, you have more than just an idea but are less than market ready (for example, having a business plan, creating samples products, or performing other initial business activities). An “intent to use” basis requires filing an additional form(s) and fee(s) prior to registration that is not required if you file under “use in commerce” at the outset.”

Although the Carters have attempted to show intent to make commercial use of Blue Ivy’s full name, so far no brand has been developed according to public knowledge, and their previous application to use the mark was abandoned on 2016 due to the Carters’ lack of evidence.

OPPOSITION

In a Notices of Opposition from 2017 to an amended registration application, Jay Z is quoted from an article in Vanity Fair as claiming the trade mark was intended really to be a device to prevent others from impinging on their child’s privacy and benefitting commercially from her name (even if the couple themselves are not commercially using her name themselves).

Although the desire to protect a child’s privacy is understandable, if the motivation behind the USPTO application was solely on that basis – ‘[i]t wasn’t for us to do anything; as you see, we haven’t done anything’ (Vanity Fair), then this does not only contradict any claim of bona fide intent to commercially benefit from a Blue Ivy Carter brand, it shows a disingenuous attitude towards the entire PTO application process. This also contradicts the requirement for ‘good faith’ and character of the applicant.

The relevant grounds for filing a Notice of Opposition in this case:

– “the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title” and

– Section 1125(c) relates to ‘[d]ilution by Blurring; Dilution by Tarnishment’ of a brand due to a similar brand’s trade mark registration if it becomes successful.

The Carters have consistently argued that due to Blue Ivy Carter being the name they are trying to trade mark, and the fame of their surname, there is a strong distinction between their brands.

However the debate as to the extent of this distinction with regard to consumer/client understanding is at the crux of this dispute between Morales’ BLUE IVY company and Beyonce’s BGK holdings.