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September 29, 2014

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

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….

TRENDING LEGAL ANALYSIS