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Special Feature -- Blue Ivy Carter Gets Star Treatment From The Feds

Wednesday, February 22, 2012

By Lara Pearson

In what world do parents name their kid Blue Ivy? That could only happen in a world where a usually reputable media outlet devotes an entire webpage to the child, which could only happen in a world where an unauthorized U.S. Federal trademark registration application for a mark comprised in part of the child’s name gets filed, examined and abandoned all in 11 days. Why, this world looks a lot like Hollywood; not the city, mind you, so much as the mentality.

Don’t get me wrong. I really don’t have a problem with celebrities getting star treatment – at restaurants, bars, and even on commercial airlines. But at the USPTO, where most of us mere trademark attorneys and unrepresented applicants have to wait 3-4 months from the date of filing before our trademark applications get examined; star treatment here seems unwarranted and unfair.

Blue Ivy Carter was born on January 7, 2012 to celebrity rock stars, Beyonce and Jay Z. Four days later, on January 11, 2012, fashion designer, Joseph Mbeh applied to federally register the trademark BLUE IVY CARTER NYC for “infant, toddler and junior clothing namely, t-shirts, pants, dresses, skirts, jeans, belts, hats, caps, sweaters, fleece pullovers, jogging suits, coats, scarves, bodysuits, socks, sleepwear, undergarments, boots, sandals and athletic footwear.” The USPTO reviewed Mbeh’s application in record time (11 days!) and rejected it citing several provisions of Section 1052 of the Trademark Act (15 U.S.C. 1052), including:

Section 2(a) for false connection with Beyonce and Jay-Z’s famous offspring, Blue Ivy Carter;
Section 2(c) for failure to submit the requisite Name Portrait Consent of the person named in the mark or her legal guardian (discussed in depth on Brand Geek here); and
Section 2(d) due to a likelihood of confusion with Registration No. 4,015,486 for BLUE IVY (& design) owned by Blue Ivy, LLC for “Retail store services featuring clothing, jewelry, home and clothing accessories, and giftware.”

Mbeh then immediately Expressly Abandoned his application.

On February 1, 2012 HipHopWired ran an article reporting Mbeh’s side of the story. Mbeh stated that he co-founded the fashion design firm, Intricate Concepts, in 2001 to design clothing for leading brands like DKNY, Sean John, andTimberland, among others. Mbeh’s design team recently launched its own clothing brand, FourFront1602, under which it plans to have a children’s apparel line. The company apparently began to design its children’s clothing line before the birth of Blue Ivy, and chose to name it after her once she was born in hopes of collaborating with her parents on it. However, Mbeh chose to abandon his trademark application while continuing discussions with the Carters regarding collaboration on a new line of children’s apparel.

Not to be discouraged, another applicant – CBH By Benton Clothier dba Creative Business House (CBH) – filed an application to register BLUE IVY CARTER GLORY IV for a variety of personal care and scented products. This application claims a first use date of February 14, 2011 – mysterious since Blue Ivy Carter wasn’t born until January, 2012. This application also was examined in record time (13 days!) and issued a refusal based on several grounds:

Section 2(a) for false connection with Beyonce and Jay-Z’s famous offspring;
Section 2(c) for failure to submit the requisite Name Portrait Consent of the applicant or its guardian; and
Insufficient specimen of use (specimen did not evidence use of the mark in commerce).

CBH must respond to this refusal by August 8, 2012 or its application will become (preliminarily) abandoned, after which it will have 2 months to revive its application or lose it forever.

Slow to the stage, Beyonce’s licensing company, BGK Trademark Holdings, LLC (BGK) finally filed its own trademark registration application on January 26, 2012 for BLUE IVY CARTER for goods in 15(!) International Classes.

That’s going to be one busy baby!

BGK’s trademark application was filed as Intent to Use, which enables Beyonce’s company to start accruing trademark rights as of the date it filed its trademark application while evidence of trademark use isn’t due for a year to 18 months from the application filing date. For additional fees, that deadline may be extended for up to 2.5 more years in 6 month increments.

The on-line trademark record of BGK’s application indicates that it was reviewed by a PTO Examiner on February 6, 2012 and issued an Office Action on February 7, 2012. The office refuses to register BLUE IVY CARTER on similar grounds as Mbeh’s application: (1) failure to submit a Name Portrait Consent (which can be executed by Blue Ivy’s guardians) and (2) a likelihood of confusion refusal with the BLUE IVY retail store registration. I predict that the Carters will purchase the BLUE IVY retail store business & associated goodwill & trademark so that their application (and use) can proceed exclusively.

Last week the Washington Post reported that “some in the field have raised an eyebrow over the unusual swiftness with which the feds have taken action on the BLUE IVY filings.” (I first wrote about it as part of my weekly IP review on January 29, 2011.) The article states that the PTO received 398,667 trademark registration applications in 2011 and tries to group related applications together according to the PTO’s Administrator for Trademark Policy and Procedure, Cynthia Lynch. However, a search of the PTO’s database for OCCUPY and 99% marks revealed that several applications filed in October, 2011 were not assigned to an Examiner until January 31, 2012, while more recently filed applications have been assigned to the same Examiners. However none proceed as quickly as the BLUE IVY applications. Regardless of the trademark or the applicant, the bottom line is do we really want a Trademark Office that prioritizes applications based on perceived cultural relevance? That seems both unfair and unwise, since cultural phenomena often is fleeting and what’s relevant today may not be tomorrow.

Lara Pearson is the Chair of the Trademark Team at Rimon Law Group, where she also serves as the firm's Chief Sustainability Officer (CSO). She also runs the branding law blog, Brand Geek. Lara’s legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; dispute resolution, and, when necessary, litigation.

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