By: Niya Rafari-Pearson
Beyoncè Knowles is involved in a lawsuit with BLUE IVY. If you were confused, this lawsuit is between Beyoncè and BLUE IVY event planning services and not with her daughter Blue Ivy Carter. Veronica Morales owns the word mark BLUE IVY. Morales holds a trademark for "event planning and management for marketing, branding, promoting or advertising the goods and services of others." Specifically, BLUE IVY is an event planning firm gaining industry recognition and nationwide notoriety. The company has been providing services since 2009, however, it was not until January 22, 2016 when Morales's mark was threatened by the entertainment mogul, Beyoncè.
Filing a trademark application does not end the process of securing trademark protection. Following a notice of allowance for an intent to use application and publication to the Official Gazette, "any person who believes that he or she would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition with the Board." Trademark Manual of Examining Procedure § 1503.01; see also 15 U.S.C. § 1063. If the petitioner meets the conditions of the statute, he or she is able to challenge the contested trademark application. On May 10, 2017, Morales filed a notice of opposition against the trademark BLUE IVY CARTER. Her argument is twofold. First, she argues that there is no intent to use the wide range of services identified in the BLUE IVY CARTER trademark. Second, based on a Vanity Fair article featuring Beyoncè's husband Jay Z, the couple engaged in fraud in their trademark filing by BGK Holdings (BGK). Jay Z is quoted as stating that, "people wanted to make products based on our child's name . . . [filing the application] wasn't for us to do anything; as you see, we haven't done anything." Thus, Morales argues BLUE IVY CARTER should be refused because there is a likelihood of confusion with the BLUE IVY event planning trademark, the owners lacks a bona fide intent to use, and BGK committed fraud.
As a result of a successful motion for early limited discovery, Morales seeks to depose Jonathan Schwartz, former executive of BGK. Schwartz's written declaration associated with the trademark application to use BLUE IVY CARTER in commerce conflicts with the Jay Z Vanity Fair article. Moreover, Schwartz has been convicted of wire fraud and falsifying tax records and BLUE IVY sought to obtain documents from him before he enters prison. Unsuccessfully, BGK argued that Schwartz is no longer associated with the company and Morales incorrectly presumed his agents would not have access to the requested documents.
In 2014, the Trademark Trial and Appeal Board issued Nationstar Mortg., LLC v. Ahmed, 2014 TTAB LEXIS 350 (T.T.A.B. Sept. 30, 2014). In that case the Board held that an applicant that knowingly signs and submits an application to the U.S. Patent and Trademark Office (USPTO) containing false representation engages in the requisite intent to deceive the USPTO. Thus, if BLUE IVY can prove that BLUE IVY CARTER's intent to use application was filed and the owners' had no intent to use the mark in commerce, fraud may be sufficiently pleaded.
How can the USPTO prevent celebrities from squatting on trademark rights to the preclusion of legitimate registrations as celebrities use more unique and distinct names for their children and grow their brand as it relates to their children?
If the Knowles-Carters have no interest in using their trademarks for their children in commerce, they should consider the right to publicity. The purpose of this common law or statutory state law protection is to prevent or control the commercial use of one's likeness or identity. While in this case it may be difficult for Beyoncè to argue that Morales's BLUE IVY commercially exploits her daughter's identity because Morales's use was prior to Blue Ivy Carter's birth. However, Beyoncè may seek to pursue a right of publicity cause of action against future unauthorized uses. Beyoncè has only sought protections relating to commerce by filing a trademark application and thus the right of publicity may be broad enough to protect her and other celebrities like her seeking to protect their children's brand.