Monday, October 22, 2012

Beyonce and Jay Z lose Trademark battle for "Blu Ivy"

It is no secret that Jay Z and Beyonce have a unique name for their first born baby girl Blu Ivy. After their baby girl was born in 2012, Beyonce and Jay Z filed an "intent to use" for the name "Blue Ivy" because they planned to use the name for a baby and children's clothing line. The name is very catchy and already quite a few people have sought after the name for commercial use. Moreover, literally two days after Blue Ivy was born, a fashion designer named Joseph Mbeh tried to trademark "Blue Ivy Carter NYC" for infant clothing use; and a little more than a week later, a New York clothier called CBH by Benton tried to trademark "Blue Ivy Carter Glory IV" for perfume use, reported Dan Nabel, Esq. for Thomson Reuters News & Insight.

However, The U.S. Patent and Trademark Office (USPTO) rejected both of the "copycat" applications in about two weeks. If you were wondering, the USPTO is the place to go and register for official patents and trademarks. The process for accepting and rejecting trademarks applications usually takes longer than two weeks but this was clearly a case of celebrity exploitation (or maybe a huge Jay and B fan exists within the office) so the USPTO did not waste any time.  

Ok so Beyonce and Jay Z filed at the USPTO but their claim to the name for and intent to use it is not official. There are two "Blue Ivy" trademark users beyond the music moguls' claim. The first is Blue Ivy, a women's retail store in Sturgeon Bay, Wisconsin, which filed its registration for Blue Ivy in January 2011-before Beyonce was even pregnant.

The second is Blue Ivy, a Boston based events planning company. The owner, Veronica Alexander, did not file for a trademark application until February 2012 but has been commercially using the name since 2009 (an important point that Fashion Legallaire will discuss at the end).  After hearing the widespread news of Beyonce and Jay Z's petition for their intent to use the name, Alexander filed for a trademark application with the USPTO in order to protect her event planning business name and entity. Alexander told the Boston Herald that she needed to protect what she had been living on. In turn, the USPTO granted Alexander an official trademark for Blue Ivy and sent a suspended letter to Beyonce and Jay Z for her Alexander's trademarks.

What does this mean? As a trademark owner Alexander has the right to use the name "Blue Ivy" for advertising, business management and administration, and planning and entertainment purposes. On the other hand Beyonce and Jay Z will not be able to use the name in any way but to call out their daughter's name, at least for now. Trademarks do have life spans and if one does not extend or refile, he or she can lose the mark protection.

Fashion Legllaire's Assesment: As mentioned before, I will explain the difference between a trademark application for an  "intent to use" verses a "use in commerce" application. The former is what Beyonce and Jay-Z filed with the USPTO and the latter is what Alexander likely filed since she was commercially using the name before actually registering it as a trademark.

  • When one files an "intent to use" application, the applicant is essentially telling the USPTO that although he or she has not started using the mark, he or she intends to use it at some time in the future. If accepted, the applicant has six months to file an "allegation of use" aka the applicant has begun using the mark. This type of application can be extended for up to three years. Essentially an "intent to use" cannot stop anyone from using the mark but it can discourage others from using it. 

  • When one files a "use in commerce" application, it means that the applicant is already using the mark in commerce and is seeking protection. 
A fashion lawyer will conduct a diligent search to make sure that the fashion company's proposed mark (name or symbol) is not already in similar use. Also, a fashion lawyer will stay on top of the life span of the mark making sure to refile and file for extensions. Lastly, a fashion lawyer will play watch-dog to make sure that no one is illegally using the mark as his own for commercial exploitation for this may lead to legal issues such as trademark infringement and dilution. 

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