In June of 2017, Beyoncé Knowles-Carter’s holding company, BGK Trademark Holdings, filed trademark applications with the USPTO for the names of her newborn twins – Rumi Carter and Sir Carter – in 15 classes of products, including fragrances, cosmetics, key rings, baby teething rings, buggies, mugs, water bottles, hair ribbons, playing cards, bags, sports balls, rattles, and novelty items.
If you are familiar with the pop superstar, you may wonder, “What about Blue Ivy?”
Well, BGK Trademark Holdings filed a similar Intent-to-Use trademark application in January 2012 for their first child in 14 classes of goods. A Notice of Allowance was issued in January 2013, but the trademark application was considered abandoned in February 2016 after a Statement of Use was not filed to show that the trademark was used in commerce.
On January 22, 2016, a second Intent-to-Use trademark application for BLUE IVY was filed by BGK Trademark Holdings, Inc.
This is when the Knowles-Carter family ran into more trouble.
A Notice of Opposition to the registration of the mark BLUE IVY was filed with the Trademark Trial and Appeal Board as of May 2017 by Blue Ivy, an event planning company. The Opposer alleged Lack of Bona Fide Intent to Use, Likelihood of Confusion, and Fraud on the USPTO.
The Opposition is still pending, and a trademark registration has never been issued by the USPTO for BLUE IVY.
The Notice of Opposition quotes Shawn Carter, Beyoncé’s husband in a 2013 Vanity Fair article:
“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.”
Is BGK Trademark Holdings filing trademark applications for the names Blue Ivy, Rumi Carter, and Sir Carter simply to prevent other businesses and individuals from obtaining trademark registrations for those names? Does BGK Trademark Holding have an intent to use the names in commerce as trademarks in the future?
It remains to be seen if the trademark application for the twins’ names will be approved, and the couple continues to fight for a trademark registration for Blue Ivy’s name.
So, what does it take to obtain a trademark registration for a name, and should you do it?
Section 2(e)(4) of the Lanham Act provides that no mark shall be registered on the Principal Register which is primarily merely a surname. A mark is not primarily a surname if the public has come to understand it as a trademark. This means that a name can be registered on the Principal Register with a showing of acquired distinctiveness
The name must be widely used in commerce to sell specified goods and/or services. The public needs to identify the name as the source of the goods and/or services. If there are no products or services in commerce that are associated with the name, then it cannot benefit from a trademark registration.
In short, there are many potential benefits to trademarking a name, but it is a complex process. Consult with an intellectual property lawyer to determine if it’s right for your situation.