Dawn Ellmore’s Associate Director Luke Rehbein on the LinkedIn story shared by the Trademark Lawyer Magazine on Beyonce’s trade mark battle for her daughter’s name.
LinkedIn is a great source of up to date Intellectual Property (IP) news. A recent story that caught my attention from the Trademark Lawyer Magazine’s LinkedIn page is about Beyoncé and Jay-Z and their fight to trade mark their daughter’s name.
LinkedIn story from Trademark Lawyer Magazine updates trade mark battle
Beyoncé and Jay Z Carter are both established global superstars. Arguably two of the most famous performers in the world, they unsurprisingly have an interest in their names being trade marked.
And since their eldest daughter, Blue Ivy Carter, was born in 2012 the Carters have been attempting to register her name as a trade mark with the US Patent and Trademark Office (USPTO).
When they made their initial attempt in 2012, it was quickly contested by the owner of a small wedding boutique which has used the name ‘Blue Ivy’ since 2009. The owner of the small business, Wendy Morales, asked that the trade mark attempt be dismissed as the name was already in use. The USPTO upheld her opposition and gave her permission to continue using the name ‘Blue Ivy’ for trading purposes.
Long-running attempt to trade mark the name ‘Blue Ivy’
In 2016, the Carters tried to register the name “Blue Ivy Carter” as a trade mark with the USPTO. And now, they have filed an appeal to ask the USPTO to dismiss the opposition, on the basis that it is “frivolous”.
Their legal team filed court documents laying out the Carter’s arguments against Ms Morales. They argue that Blue Ivy Carter is a “cultural icon”. She is, according to court documents, widely considered as a “mini style star” and her every move is followed by the media. The Carters assert that the opposition, by claiming that customers will be confused between the name of their wedding boutique and the daughter of two of the most famous people in the world, is ridiculous and “should be refused in its entirety.”
As the trade mark application is for the full name of the seven-year-old, which is Blue Ivy Carter, there can be no confusion. The legal team says that the full name clearly shows Blue Ivy is a “celebrity” as opposed to a “regional event planning business”. Ms Morales’ small business, negligible social media presence and insignificant website are also pointed out as further evidence that there can be no confusion between the two.
Opposition claims customer confusion dismissed by Beyoncé’s lawyers
Ms Morales is also accused of cashing in on the media attention paid to the trade mark dispute. Documents say that she has been overtly seeking media coverage for her business due to the dispute, and to connect her business in the minds of the public with Beyoncé and Jay-Z to further her own interests.
Evidence submitted to support this include several interviews given by Ms Morales shortly after Blue Ivy was born. Beyoncé and Jay-Z also allege that Ms Morales tried to sell the wedding planning business to them for several millions. Ms Morales has denied these accusations.
There are two major reasons celebrities trade mark their names. One is to make money from merchandise, services and products using the name. And the other is to prevent other people cashing in on the name through unauthorised use.
It’s common practice for celebrities of all types to try and register their name. The likes of Julian Assange have done so in both the UK and the EU, and even Alan Titschmarsh holds four trade marks.
Should celebrities use trade mark law to capitalise on names?
The use of trade mark law by celebrities inevitably kicks off debate between Intellectual Property legal professionals. Some consider it a deliberate misuse of the purpose of trade marks, while others argue that it’s a logical step to protect the celebrity’s interests.
Whichever side of the debate you fall on, it’s now up to the USPTO to decide whether Beyoncé’s seven-year-old daughter can reasonably be considered a “cultural icon”. The Carters have successful trade marked “Blue Ivy Carter” in Europe as a community trade mark. It remains to be seen whether the US will follow suit.
About Luke Rehbein
Luke Rehbein is an Associate Director at Dawn Ellmore Employment and a qualified CertRP recruitment professional. Luke can help place individuals at all levels in Patent, Trade Mark and Legal Attorney and Solicitor Staff roles in the UK and worldwide. Contact Luke Rehbein through LinkedIn here.