IP Matters: Week 3

Veronica Morales wants ‘Blue Ivy’ for her company; Jay-Z and Beyoncé wants it for their daughter.

Blue Ivy Events is the name of a Boston-based wedding planning company. The company has been in business since 2009 and it is owned by Veronica Morales (formerly Veronica Alexandra).

Blue Ivy Carter is the name of Jay-Z and Beyoncé’s daughter. Blue Ivy Carter was born in 7 January 2012. Few days after Blue Ivy Carter’s birth, Jay-Z and Beyoncé applied to trademark their daughter’s name, BLUE IVY. If successful, BLUE IVY was going to be the trademark of a baby-related product line.

Veronica Morales must have been seeing the news when she quickly applied to register BLUE IVY as her company’s trademark in February 2012. The United States Patent and Trademark Office (USPTO) accepted Veronica Morales’s application for BLUE IVY. The trademark class covered event-planning services. (Jay-Z and Beyoncé’s trademark agent is reported to have failed to complete all the paperwork at the time, hence the delay of theirs.)

Jay-Z and Beyoncé dumps BLUE IVY; Gets BGK to trademark BLUE IVY CARTER

In January 2016, BGK Holdings, Beyoncé’s licensing business, applied to trademark BLUE IVY CARTER at the USPTO. The application covered a number of trademark classes in connection with a wide range of goods and services, including baby products, CDs, cosmetics, DVDs, mugs, and even entertainment services and retail store.

Veronica Morales’s Blue Ivy Events in May 2017 opposed BKG’s trademark application for BLUE IVY CARTER. Mrs Morales argues that (1) BGK does not intend to use the services listed in the BLUE IVY CARTER trademark application, and (2) there is a likelihood of confusion with her company’s event-planning brand, BLUE IVY. She also argues that BKG’s act of stating that it intends to use the BLUE IVY CARTER trademark for goods and services when in fact there is evidence that it won’t amounts to fraud.

This is why Mrs Morales wants to get Jonathan Schwartz, BGK Holdings’ former Vice President who filed the BLUE IVY CARTER trademark request on Beyonce’s behalf, to testify. But BGK says Mr Schwartz was no longer BGK’s director, managing agent, or officer and has no affiliation with BGK. A judge has just recently granted Mrs Morales’s request.

Four Points You Must Know about How Trademarks Really Work

While the Blue Ivy trademark dispute is still a developing story 6 years after, I point out below 4 things you must know about how trademarks really work:

1. Mrs Morales’s Blue Ivy Events has a strong point about BGK’s lack of intention to use the services listed in the BLUE IVY CARTER trademark application. Jay, and (2) there is a likelihood of confusion with her company’s event-planning brand, BLUE IVY. If Jay-Z’s comment in the media in October 2013 below is anything to go by, BKG has a difficult case. In that comment, Jay-Z said, “People wanted to make products based on our child’s name and you don’t want anybody trying to benefit off [sic] your baby’s name. It wasn’t for us to do anything; as you see, we haven’t done anything”. Mrs Morales has of course relied on these words in the opposition trial—the basis for accusing BKG of fraud.
2. BLUE IVY CARTER is too similar to BLUE IVY,  Blue Ivy Event’s now-registered trademark. It would be difficult not to agree with Blue Ivy Events that granting BKG’s trademark application for BLUE IVY CARTER won’t confuse consumers. But because trademark is registered by class, the USPTO may decide that while BLUE IVY’ is a registered trademark under the class covering event services, BLUE IVY CARTER can be legally registered as a separate trademark for another brand in classes other than event services. But the Trademark Tribunal’s and Appeal Board (TTAB) may be having a tough time arriving at this decision because trademark is increasingly evolving from a system used to distinctively connect marks with particular goods and services to a tool for advertising, branding, investments, and even promoting quality. These secondary concerns are now so critical in today’s businesses that the primary function of trademark now seems increasingly foggy. 
3. To successfully trademark a name, symbol, or logo, it must not only be distinctive but also be connected with goods or services. This is why trademark laws require that to be eligible for trademark registration, a name, symbol, or logo must be connected with business. Though by filing the application through BGK, Jay-Z and Beyoncé may be demonstrating their intent to really use ‘BLUE IVY CARTER’ and not just sit on the trademark, it is not sufficient to prove use.
4. Because BLUE IVY is actually the of Jay-Z and Beyoncé’s daughter—a name widely identified with her—trademark law in the US requires that any person who wishes to trademark such personal names must obtain consent. If Jay-Z and Beyoncé really didn’t intend to do business with BLUE IVY or BLUE IVY CARTER, could they have just sat back and wait for applicants who needed contents? Not quite. A number of business-minded individuals were already applying for trademarks without seeking consent from Blue Ivy’s parents. There seems to be a growing level of uncertainty about the trademark system that even gold diggers—or at least opportunists—now consider celebrity-name trademarks a gold rush.

1. With trademark, there is everything in a name. If you understand how critical trademark is to your brand, you will appreciate the worth your name has. Though Beyoncé and Jay-Z—superstars and entertainment entrepreneurs—may have moved too fast, they at least had an idea that ‘Blue IVY’ had some considerable worth.
2. But because there is everything in a name does not mean you can trademark a name in order to merely stop others from profiting from it. Trademarks don’t work that way. If Jay-Z’s comment in the media in October 2013 is anything to go by, Jay-Z completely misunderstood how trademarks work. You shouldn’t. In Jay-Z’s words, “People wanted to make products based on our child’s name and you don’t want anybody trying to benefit off [sic] your baby’s name. It wasn’t for us to do anything; as you see, we haven’t done anything.” Mrs Morales is strongly relying on these words in the opposition trial. Jay-Z’s fears are understandable anyway. In fact, Jay-Z and Beyoncé’s first attempt to trademark BLUE IVY came a few days after two persons attempted to trademark BLUE IVY in combination with one or more characters immediately after the superstars named their new-born baby, BLUE IVY.  
3. Get trademark protection for your business—both products and services—as early as possible so you avoid disputes and other related issues. Victoria Morales didn’t think of trademarking her Blue Ivy for her company until she discovered Jay-Z and Beyoncé  had applied to do so for their daughter. Even if you are just celebrity, you may need to consider protecting your name in today’s hyperactive business world.