For several months, the Blue Ivy intellectual property issue has concerned me. Yes, I am a fan of Bey, and Jay. My frustration stemmed from other reasons related to my love for the law + intellectual property. Late yesterday evening, news broke that the United States Patents and Trademark Office (USPTO) denied the Carter’s applications for the Blue Ivy trademark. This is not the first time the celeb duo has faced issues with protecting the potential Blue Ivy intellectual property.
First, there was the domain issue. You may recall that early on, the couple launched a Tumblr account helloblueivycarter.com to commemorate the birth and life of Blue Ivy. That wasn’t coincidence. Upon the couple’s announcement of Blue Ivy’s name, peeps rushed to purchase the celebrity domain name with hopes of cashing in major dollars. The intent to “cash in” on the celebrity of someone else through the purchase of a domain name, identifying that celeb, is celebrity cybersquatting.
The Anticybersquatting Consumer Protection Act addresses these situations. Celebrity cybersquatting does not apply to individuals who purchased the name before it existed or existed as “celebrity.” In the Bey-Jay case, one Blue Ivy.com domain was purchased in 1999. That owner could choose to sell his domain, but could not be forced to give it up. I could understand why the excited parents to be did not think to register all related domains before announcing Blue Ivy’s name. But, if I was their counsel, we would have been on it.
I digress…
Now let’s discuss the current issue.
In January 2012, the Carters filed the trademark application for Blue Ivy associated with several things including a line of baby-related products, diaper bags, baby cosmetics and carriages. The USPTO rejected the Carter’s application because of a likelihood of confusion with another registered trademark, and false connection, among other reasons.
Ultimately, the application was rejected because of a prior registration by Boston-based event planning company, Blue Ivy Events. Blue Ivy Events has been around since 2009, and wisely registered the trademark. In the trademark world, the general rule of thumb is “first come, first serve.”
All is not lost. The Carters could buy out Veronica Alexandra, owner of Blue Ivy Events, for the trademark (otherwise known as a trademark assignment). Ms. Alexandra has to be willing to sell the trademark, however.
Key Trademark Lessons
standard character mark v. design mark
The Carters initially filed BLUE IVY as a standard character mark. This would grant trademark ownership over the phrase BLUE IVY without respect to design. Blue Ivy Events also filed BLUE IVY as a standard character mark (and without respect to design). This was a savvy move because it grants broader trademark protection and is a key reason why The Carters faced a road block.
no blanket trademark
The Carters filed the trademark in several classifications (a term used to define the good or service category) because there is no blanket trademark right. In other words, a trademark is tied to a specific good or service.
So how did Blue Ivy Events win? Because the USPTO does not determine “likelihood of confusion” based on registrations within a particular classification. The question is simply, “are these two registrations likely to confuse the public?” In this case, involving two standard character marks, the likelihood of confusion was great.
a trademark is not a trade name
Notice, the name of the Boston-based company is Blue Ivy Events, yet their trademark is Blue Ivy? Again, this was a very savvy move. Your trademark does not have to match your business name, or trade name. Sometimes, broader is better. The Carters might have had a stronger fight had Ms. Alexandra actually registered, BLUE IVY EVENTS as the trademark.
Lastly, the media that I’ve seen has not mentioned that there is another Blue Ivy on the books.
Well, there is….
The other Blue Ivy is described on the USPTO records as, “retail store services featuring clothing, jewelry, home and clothing accessories, and giftware.” This Blue Ivy was registered on August 23, 2011 as a design mark. In other words, the trademark only extends to the actual design and does not provide broad ownership over the phrase.