Earlier this year, we posted a blog regarding the trademark application filed by Beyonce and Jay-Z for BLUE IVY CARTER, the name of their newborn daughter, for a variety of goods and services. At the time, we noted that there was also a subsequently filed third party trademark application for BLUE IVY for services falling within the same International Classes as those covered by the BLUE IVY CARTER application.
Recently, several news reports indicated that the BLUE IVY CARTER trademark application had been refused. A detailed review reveals that reports of the application’s demise have been greatly exaggerated. Indeed, the BLUE IVY CARTER application is alive and well and has actually been approved by the Trademark Examiner. The errant news reports seem to have stemmed from the registration of the third party BLUE IVY trademark, and the presumption that such registration would be fatal to the BLUE IVY CARTER application.
Importantly, trademark rights provide their owners with the right to use a mark in connection with specific goods and/or services. Trademark rights extend only to the goods and/or services in connection with which the trademark is being used, or in the case of an intent to use application, to the goods and/or services in connection with which the Applicant intends to use the trademark. When one applies to register a trademark, the specific goods and services for which protection is sought must be listed in the application. Trademarks that are similar, or even the same, may coexist if there would be no likelihood of consumer confusion as to the source or origin of the respective goods and/or services.
In this case, the BLUE IVY application was filed in Class 35 for services that include “online retail store services featuring paintings, wedding portraits and invitations,” and in Class 41 for services that include “special event planning for social entertainment purposes.” The BLUE IVY CARTER application was filed in Class 35 for goods that include “online retail store services featuring music,” and in Class 41 for goods that include “entertainment services.”
We opined in our previous blog on the topic that the BLUE IVY application could be “blocked” by the BLUE IVY CARTER application, which was filed first and would therefore have priority of trademark prosecution. While this certainly could have happened, it did not. In fact, the Trademark Examiner did not even cite the BLUE IVY CARTER application against the BLUE IVY application. As trademark attorneys that deal with trademark prosecution on a daily basis, we are somewhat surprised that at least the potential for confusion was not raised, given that: (i) the trademarks are highly similar (i.e., the first two words of each mark are identical); and (ii) the parties’ services fall within the same International Classes. The Trademark Examiner apparently concluded, without need for further inquiry, that the parties’ respective services are not sufficiently related so that they would be likely to be confused by consumers. Possibly the Examiner was “influenced” by the existence of another party’s 2011 registration for “BLUE IVY” for retail store services, namely: “retail store services featuring clothing, jewelry, home and clothing accessories, and giftware.” Simply stated, had the Trademark Office concluded that the BLUE IVY application had to be rejected because of the earlier filed application of Miss Carter, it would have had no choice but to reject both that application and Miss Carter’s application on the basis of the 2011 registration. Upon reflection, it appears that, quite possibly not wishing to offend Miss Carter (that is to say, her parents), the Trademark Office chose the Solomonic route of allowing ALL of the BLUE IVY marks to “coexist.”
As a result, the BLUE IVY trademark has registered, and the BLUE IVY CARTER application will soon be published for opposition. If no objections are raised by third parties, including the owners of the 2011 registration, BLUE IVY CARTER will register as a trademark in due course.
Why do we have this unshakeable (and admittedly cynical) feeling that the owner of the 2011 registration may “raise an objection” to Miss Carter’s application when it is published for opposition – the type of objection that can be settled “under the right circumstances” (wink, wink)? We will report further if and when “developments” occur.
