The Trademark Trial and Appeal Board (TTAB) recently dismissed an opposition proceeding against the trademark application of BLUE IVY CARTER. A Massachusetts wedding planner filed the opposition claiming a likelihood of confusion with her mark BLUE IVY for wedding planning. The TTAB ruled there is no likelihood of confusion between BLUE IVY for wedding planning and BLUE IVY CARTER for various other goods/services. Accordingly, the TTAB dismissed the opposition proceeding.

We previously wrote about celebrities Kylie Jenner and DJ Khaled trademarking their children’s names for various goods and services. Children of celebrities become instantly famous at birth. This fame can be used to build a foundation for a multi-million dollar empire. Blue Ivy Carter, daughter of Beyoncé and Jay-Z, became instantly famous at birth. Accordingly, Beyoncé filed a trademark application for her daughter’s name.

Blue Ivy Carter Trademark Application

BGK Trademark Holdings, LLC (“BGK”) is a holding company owned by Beyoncé. BGK filed an intent to use trademark application for BLUE IVY CARTER in 2012. The application lists numerous goods and services ranging from baby products such as strollers to fragrances to entertainment services. The mark went abandoned in February of 2016 for failure to file a statement of use. However, before the mark went abandoned, BGK filed a new intent to use application for the same goods and services.

Opposition Proceeding

In 2017, Veronica Morales, a wedding planner from Massachusetts, instituted an opposition proceeding to oppose the registration of the mark BLUE IVY CARTER. In 2012, Morales obtained a trademark registration for BLUE IVY. The registration covers event planning in class 35 and consultation in the field of special event planning in class 41. Morales claimed a likelihood of confusion with the BLUE IVY CARTER mark.

BGK argued that consumers are not likely to confuse a wedding planning business with the daughter of two of the most famous performers in the world.

Morales argued there is no bona fide intent to use the mark in commerce. Morales referenced a Vanity Fair interview with Jay-Z, husband of Beyoncé and father to Blue Ivy Carter. In the interview, Jay-Z stated that they trademarked the name because they did not want anyone else to benefit from their baby’s name. He stated that they attempted to trademark the name so that no one else could. Morales argued the couple had no bona fide intention of ever using the mark in commerce. Morales also noted that the previous registration was abandoned for not filing a statement of use even though all extensions were taken. BGK filed the same mark just prior to abandonment. Morales asserts this provides additional evidence of no bona fide intent to use the mark for the goods/services in commerce.

Ruling

The TTAB found that the names BLUE IVY CARTER and BLUE IVY are similar. However, Morales presented no evidence showing consumers believe that the goods/services emanate from the same source. The TTAB also stated there is a low likelihood of consumers confusing a wedding planning business with Beyoncé and Jay-Z’s daughter. Regarding no bona fide intent to use the mark in commerce, the TTAB refused to consider Jay-Z’s Vanity Fair interview on the basis of hearsay. Further, the TTAB stated the mere fact that they refiled for the mark was insufficient to show a lack of bona fide intent to use the mark in commerce.

Takeaway

Showing a lack of bona fide intent to use a mark is hard to prove absent explicit evidence. As a prior user, Morales keeps her trademark for her wedding planning business. However, she could not stop the BLUE IVY CARTER mark even though it lists the same classes as Morales’ mark. Only time will tell if BKG ever provides the enumerated goods/services to consumers or if the mark will be continually refiled without ever providing the goods/services to the public.