- Posted on: Aug 11 2020
Beyoncé Receives Big Win in “BLUE IVY CARTER” Trademark Opposition
[Aug. 11, 2020] Beyoncé, named by Forbes as the Most Powerful Woman in Entertainment, has built a business empire that stretches into entertainment, fashion, major product endorsements, as well as music production and streaming distribution. With such a storied career, it should come as no surprise that Beyoncé is incredibly in-tune with personal branding and the importance of intellectual property rights. Case in point was how Beyoncé generated a lot of buzz in the trademark legal world when she filed to register her new daughter’s name, BLUE IVY CARTER, as a trademark in January 2012, only a few weeks after the baby’s birth. Even more newsworthy in the trademark world was the fact that unrelated third parties filed to register a variation of her daughter’s name as much as a year before.
The filed trademark applications include goods and services covering everything from books to pacifiers, shampoo, cosmetics, jewelry, video games, and online store services and entertainment services.
Until last week, one obstacle prevented the registration of that mark: Veronica Morales, who opposed Beyoncé’s application. Morales, a wedding event planner, has called her business “Blue Ivy Events” since September 1, 2009 (so her USPTO registration claims), before Beyoncé’s daughter was born. Morales received a trademark registration for her business from the U.S. Patent and Trademark Office (USPTO) for the mark “BLUE IVY” in 2012. Based on those registered rights in her BLUE IVY mark, Morales filed a “notice of opposition” with the Trademark Trial and Appeal Board (TTAB), opposing the registration of the Beyoncé application because of an alleged likelihood of confusion with her registered BLUE IVY mark for special event planning services.
Morales also claimed in her opposition that Beyoncé and Jay-Z had no actual intent to use the name “Blue Ivy Carter” in commerce, but rather, filed for trademark protection simply to prevent others from using the name. U.S. trademark law, which aims to protect marks only for bona fide commercial use, frowns upon and outlaws registrations that lack this actual intent or actual use. Even more surprising was Morales’ assertion that Beyoncé had engaged in fraud by seeking a trademark for a name she never intended to use in commerce.
To reinforce her case against the famous singers and argue their lack of intent, Morales pointed to a 2013 interview Jay-Z gave to Vanity Fair, titled “Jay Z Has the Room.” In it, Jay-Z reportedly discussed his reasons for attempting to trademark his daughter’s name, saying they did it merely so no one else could.
“People wanted to make products based on our child’s name, and you don’t want anybody trying to benefit off your baby’s name. It wasn’t for us to do anything; as you see, we haven’t done anything. First of all, it’s a child, and it bothers me when there’s no [boundaries]. I come from the streets, and even in the most atrocious things we were doing, we had lines: no kids, no mothers— there was respect there. But [now] there’s no boundaries. For somebody to say, [t]his person had a kid—I’m gonna make a stroller with that kid’s name. It’s, like, where’s the humanity?”
While the substance of this statement could be damaging evidence against Beyoncé if properly attributed to her, U.S. legal procedure held this evidence to be inadmissible: Jay-Z was not a formal party to the legal action and was not a sworn witness, so the statement is considered “hearsay.” Moreover, the magazine article without authentication is considered hearsay, so the TTAB called this interview “hearsay within hearsay.” Morales’ lawyer was resourceful in using this evidence; however, to be admissible, he probably needed to take testimony from Jay-Z, which would have likely required a subpoena and been difficult to obtain.
In response to this opposition, Beyoncé defended that Morales’ “likelihood of confusion” argument was frivolous at best because no consumer would be likely to believe that Opposer’s “boutique wedding event planning business” described in Classes 35 and 41 of her registration is related to the Class 35 and 41 services in the Beyoncé registration that reads:
- Class 35 – Product merchandising for others; online retail store services featuring music, musical recordings, motion pictures, clothing and clothing accessories, novelty items; Entertainment marketing services, namely, marketing, promotion and advertising for recording and performing artists;
- Class 41 – Entertainment services, namely, providing online video games, dance events by a recording artist, multimedia production services; Entertainment services in the nature of live musical performances; production of motion picture films, fan clubs.
In a scathing opinion issued on July 6, 2020, the TTAB unceremoniously rejected both of Morales’ arguments regarding the likelihood of confusion and lack of bona fide intent to use and refused to grant the opposition against the Beyoncé application. The TTAB condemned Morales for including extraneous documents in her brief to the Board, which violates TTAB rules. The Board also found that Morales had showed “no evidence suggesting the services are related in any manner that would give rise to the mistaken belief that they emanate from the same source,” and accused Morales of “throwing arguments against a wall, hoping something would stick.”
While the Beyoncé application covers 14 classes of goods and services, including the same Classes 35 and 41 as the Opposer’s registration, Beyoncé’s trademark lawyer appears to have drafted the Class 35 and 41 services descriptions sufficiently narrow to not overlap the service descriptions in the BLUE IVY registration. One wonders if Morales would have opposed this mark if Beyoncé had been an ordinary businessperson instead of one of the world’s most famous entertainment celebrities.
While the Beyoncé application has survived the opposition period with an unsuccessful challenge, the “BLUE IVY CARTER” mark must still be fully used in U.S. Commerce and evidence of that usage approved by the USPTO in order for the mark to register. That being said, keep an eye out for BLUE IVY CARTER merchandise as these intellectual property rights are likely to occur sooner rather than later.
If registration, enforcement, or maintenance of a trademark or service mark is something you have been considering, or a third party is challenging your mark, contact our Intellectual Property team at Dunlap, Bennett, Ludwig by calling 703-777-7319 or emailing email@example.com to schedule a consultation.
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