How did international superstars Beyonce and Jay-Z celebrate the birth of their daughter, Blue Ivy Carter, in January? They commemorated the occasion by filing an intent-to-use, multi-class trademark application for her name, of course. Apparently recognizing the caché of the highly anticipated newborn’s name, and further anticipating the countless merchandising opportunities that may arise, the proud parents filed an application to register BLUE IVY CARTER merely days after the blessed event.
The BLUE IVY CARTER application covers a host of goods and services in numerous international classes. Such a “multi-class” application is often used by an Applicant to preserve the right to use a mark in connection with a large number of goods and services, even though the Applicant may never commence actual use of the mark in connection with many of those goods and services. To this end, it is difficult to imagine BLUE IVY CARTER “footballs” and “golf balls” making their way into the marketplace anytime soon, although these goods are covered by the application.
As it turns out, the superstar parents were not the first to conjure up the name BLUE IVY. A Boston-based company had been using the mark BLUE IVY in connection with its event planning services since 2009. It did not file for a trademark registration, however, until after the application for BLUE IVY CARTER had been filed and publicized. Apparently feeling a sense of urgency to protect its rights in the mark, the company filed an application for BLUE IVY in February. Importantly, the BLUE IVY CARTER and BLUE IVY applications both cover services in International Classes 35 and 41.
The filing of these applications caused us to think about the importance of registering trademarks and the dilemma in which the owner of the BLUE IVY application may find itself as a result of the filing of the BLUE IVY CARTER application.
As a preliminary matter, it is important to recognize that trademark rights are based on use in commerce. As soon as a trademark is used in commerce in connection with goods or services, trademark rights exist in the mark even if an application for registration has never been filed. The owner of a mark that is used in commerce, but not registered, is said to have “common law” trademark rights.
By virtue of its prior actual use in commerce, the BLUE IVY trademark has superior rights to the BLUE IVY CARTER trademark, which has not yet been used in commerce, as regards services in International Classes 35 and 41. Therefore, assuming for this discussion that both parties desire to use their respective marks for identical services, the BLUE IVY trademark, having superior rights, should ultimately prevail in any such dispute.
However, by not registering the BLUE IVY trademark when use commenced and instead relying on “common law” rights, a procedural dilemma has arisen, the nature of which would likely have been anticipated only by an experienced Trademark Attorney. The BLUE IVY CARTER application was filed earlier than the BLUE IVY application. As a result, the BLUE IVY CARTER application will have priority of prosecution in the Trademark Office, even though the BLUE IVY trademark has superior rights. This means that, when examining the BLUE IVY CARTER application, the Trademark Examiner at the U.S. Patent and Trademark Office will not consider the later-filed BLUE IVY application or any “common law” rights its owner possesses.
If, on the other hand, the Trademark Examiner believes that there is a likelihood of confusion between the two marks, the BLUE IVY CARTER application may well be cited against the BLUE IVY application. In such a scenario, the BLUE IVY application will likely be suspended until a decision is made regarding registration of the BLUE IVY CARTER mark.
The result is that BLUE IVY CARTER may ultimately be approved by the U.S. Patent and Trademark Office for registration. The owner of the BLUE IVY trademark would then need to take affirmative steps to protect its rights, either by commencing an “Opposition” proceeding to oppose registration, or a “Cancellation” proceeding to cancel the mark in the event that it should register. Both of these alternatives can be expensive, time consuming and will delay the ultimate registration of the BLUE IVY trademark. Moreover, both alternatives could have been avoided had the BLUE IVY application been filed on or before the date when the mark was first used in commerce.
Federal registration is also important because it affords the owner several legal presumptions in a dispute with another party, to wit:
1) The presumption that the registered mark is valid;
2) The presumption that the Registrant owns the mark; and
3) The presumption that the Registrant has
the exclusive right to use the mark in commerce nationwide in connection with the goods and/or services specified in the registration.
In any dispute with the Registrant, it would be incumbent upon the party adverse to prove that these presumptions should not apply.
More importantly, once a registered mark has been used in commerce continuously for five years after registration and the Registrant files certain documentation, the mark can become “incontestable,” in which case it can only be challenged on limited grounds (and not on the most typical ground – namely, likelihood of confusion with another mark). This, in effect, creates a safe harbor for an incontestable mark as used on the goods or services in the registration, subject to only a few defenses.
If you would like more information regarding registration of your “common law” trademarks, or should you have any questions regarding your trademark rights, we recommend that you consult with an experienced Intellectual Property Attorney or Trademark Attorney. If you believe that your trademark rights are being infringed, we recommend that you consult with an experienced Trademark Litigation Attorney as soon as possible.
