Intent To Use
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Beyonce’s Blue Ivy Carter Trademark Opposed
Veronica Morales d/b/a Blue Ivy (“Blue Ivy”) has filed a trademark opposition against Beyonce Knowles’ company BGK Trademark Holdings, LLC (“BGK”) for the mark BLUE IVY CARTER on the grounds that:
- it is likely to confuse consumers;
- BGK had no bona fide intent to use the mark when it filed; and
- a claim of fraud on the United States Patent and Trademark Office (“USPTO”).
Morales founded Blue Ivy, an entertainment and event planning firm, in 2009 and was recognized as one of the top 25 wedding planners in the world. Blue Ivy also has a registered trademark for BLUE IVY which issued on October 16, 2012.
What is interesting here is that BGK filed its first trademark application under an intent to use basis for BLUE IVY CARTER back in January of 2012, which was before Morales filed hers for BLUE IVY (February 2012). Both marks were approved with Morales receiving a registration and BGK eventually receiving a notice of allowance on January 22, 2013.
With intent to use applications, once you receive a notice of allowance you must eventually file a statement of use when you begin using the mark in commerce. If you have not started using the mark within 6 months of your Notice of Allowance, you may request a 6 month extension to file a statement of use. The applicant may file a total of five extension requests, but a statement of use may not be filed more than 36 months from when a notice of allowance was issued.
BGK filed its fifth extension request in July of 2015. On January 22, 2016, it filed a new trademark application because the 36 month period to file a statement of use was up. This new application is now the subject of this opposition.
Aside from the obvious likelihood of confusion argument because of the similarities between the two marks BLUE IVY and BLUE IVY CARTER, Morales opposes on two other grounds; lack of an intent to use the Blue Ivy Carter mark and committing fraud on the USPTO by knowingly making false material misrepresentations of fact to the USPTO.
Lack of Intent To Use
The United States Trademark Act, Section 1(b) states that an intent to use application may be filed by a person “who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce.” When submitting a trademark application, a party must sign a statement affirming this bona fide intent to use. Knowles signed this statement in her original application filed in 2012. BGK’s Executive Vice President signed it in the new application.
To show a lack of BGK’s intention to use the BLUE IVY CARTER trademark, Morales cites a 2013 Vanity Fair article from an interview with Beyonce’s husband, Shawn Carter (Jay Z). In that article, Jay Z was asked about the trademark filed for his daughter’s name and responded with the following statement:
“People wanted to make products based on our child’s name, and you don’t want anybody trying to benefit off your baby’s name. It wasn’t for us to do anything; as you see, we haven’t done anything.”
Morales also points out that BGK’s Executive Vice President, Jonathan Schwartz, signed and submitted the oath to the USPTO for the second application, but has since been sentenced to prison for scheming to defraud others. She alleges that the Schwartz knew that BGK had no plans or intention to use the BLUE IVY CARTER mark, but signed the application anyway.
The same evidence was used to support Morales’ third ground for opposition regarding fraud on the USPTO. Morales believes BGK knowingly made false, material misrepresentations of fact to the USPTO.
It will be interesting to see where this one goes. You can read the whole opposition here: BLUE IVY CARTER Opposition
Trademark applications are done for a flat fee, which includes a trademark search, opinion as to the likelihood of registration, and filing the application with the trademark office.
Have you come up with a great name or slogan, but haven’t opened up shop yet? That’s OK. You can still reserve your trademark with an “intent-to-use” application. Find out more HERE.
If you already have a registered trademark, you will need to renew it every once in a while so it does not expire. If you stop using your trademark to identify the goods/services it protects, it no longer operates as a trademark.
Selling your business or need to transfer your trademark to a different entity? This is called an “assignment,” which is recorded with the USPTO.
Let’s face it, no matter what you do, there may be others who copy you. Unfortunately, you may also find yourself on the wrong end of a cease and desist letter. I can help you identify whatever rights you may have and provide an opinion on how you should proceed. Depending on your situation, sending a cease and desist to an infringer, or responding to an infringer can all be handled. Additionally, I can help you negotiate a settlement agreement with the other party.
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Anastasios G. Garbis
Registered Patent Attorney
I am a registered patent attorney and spend my time consulting entrepreneurs on how to protect their businesses through the use of different forms of intellectual property. My experiences through my time as an attorney and involvement in various business ventures in the restaurant and hospitality industry have helped me relate to the needs of small businesses and entrepreneurs.