Celebrity babies are big business, there’s no question about that. This, coupled with Jay-Z’s demonstrated business acumen, makes it no surprise that Hova and Beyoncé filed just a few weeks ago to register “Blue Ivy Carter” as a trademark with the United States Patent and Trademark Office (USPTO).
This would be enough to make headlines in itself this day in age. However, there are several important underlying facts that make hip hop’s most powerful couple’s trademark application particularly noteworthy for rising entrepreneurs.
Intent-to-Use Trademark Applications
Since the superstar duo has not yet begun marketing baby-branded products, the “Blue Ivy Carter” trademark registration application was filed on an “intent-to-use” basis. The USPTO allows business owners to essentially reserve rights in a trademark for later use as long as they have a “bona fide” intent to make use of the trademark in the future.
It is somewhat surprising that Jay-Z and Beyoncé (or rather, their trademark attorney) waited four weeks after Blue Ivy’s birth to file for registration. It seems unlikely that the idea to sell baby-related products didn’t hit them until that time, and intent-to-use trademark applications can be sustained over a long period of time with payment of only nominal semi-annual filing fees (at $100 per class of goods, the application would have carried a $1,500 semi-annual maintenance cost). Although, perhaps the couple wanted to keep their plans under wraps; or, perhaps they weren’t too concerned about someone else beating them to the punch…
“Trademarking” a Name Requires the Person’s Consent
In order to register a trademark that incorporates a person’s name, you must have that person’s written consent. Before Jay-Z and Beyoncé’s trademark application got filed, two enterprising designers filed “Blue Ivy Carter NYC” and “Blue Ivy Carter Glory IV” trademark applications. One of these applications have already been denied on the basis of lack of consent of the named individual.
This is an important principle for entrepreneurs to keep in mind to avoid wasting money on hopeless trademark registration applications. Even if well-intentioned, these efforts will not be successful, and are not likely to earn you any favor in the mind of the rightful trademark owner.
Pre-Existing Trademark Rights
Also important, a trademark may be adopted only if it is not “confusingly similar” to a trademark already in use by somebody else. The “confusingly similar” test looks at both of the trademarks in question, and also analyzes whether the parties’ respective goods or services are likely to compete within a single channel of trade. The trademarks need not be identical in order to be “confusingly similar.”
In early 2011 (before Blue Ivy Carter was in the oven), a Wisconsin-based retailer applied to register “Blue Ivy” as a trademark for use in connection with “[r]etail store services featuring clothing, jewelry, home and clothing accessories, and giftware.” Its application was approved in August of last year. As a result, Jay-Z and Beyoncé’s trademark registration application is likely to face resistance with respect to at least a few of the classes of goods listed in the application. The “Blue Ivy Carter” trademark application covers everything from tablet PCs to baby bouncers, but also includes specifically retail store services, clothing, jewelry and accessories.
Buying, Selling and Licensing Trademarks; Memoranda of Understanding
So, if Jay-Z and Beyoncé want to obtain rights to use “Blue Ivy Carter” on all of the products listed in their trademark registration application, what options do they have (assuming the USPTO does not find a distinction that allows the two trademarks to co-exist)? One option is to seek to buy rights in the “Blue Ivy” trademark from the Wisconsin retailer. Another option is to try to enter into some sort of Memorandum of Understanding with the registered trademark owner acknowledging that the two parties’ trademarks are not actually so “confusingly similar” that they cannot be used simultaneously. Or (and as a preliminary step for the first two options), they may seek to investigate the Wisconsin retailer to make sure that it has actually been using the trademark as represented in the registration application. If it turns out that the retailer never opened for business and/or isn’t using the trademark as described, then it is possible that the registration could be invalidated.
So, as you can see, there are several important considerations that go into protecting a trademark. The next time you’re preparing for a new launch don’t forget to ask yourself, What Would Hova Do?
Jeff Fabian helps business owners protect their brands so that they can stay focused on running their businesses. Visit http://etrademarksolutions.com for more information. You can also follow Jeff on Twitter @jsfabian.
This article is provided for informational purposes only, and does not constitute legal advice.