We here at The Licensing Law Blog have a saying: “It’s never too early to teach your kids about licensing.”
Apparently mega-super-celebrities Beyonce and Jay-Z agree. With licensing in mind, they recently filed a trademark application for their newborn baby daughter’s name, Blue Ivy.
Here to explain the how and why, we are honored to have as a guest blogger our friend and former Beanstalk colleague, Oliver Herzfeld:
1. How does one trademark a child’s name?
Trademarking a child’s name is no different than doing so for any other name or mark. In many countries, one’s right to use a mark is conditioned on being the first to register it in the relevant jurisdiction (i.e., it is a race to the filing office). However, in the U.S., one’s right to use a mark is conditioned on being the first to actually use the mark in commerce. Federal trademark registration is not mandatory. In general, registering a mark in the U.S. will not help permit one to use it, nor will a failure to register a mark in the U.S., by itself, prohibit one from using it. In most cases, all registration will do is provide certain procedural advantages. One exception to the foregoing is a so-called “intent to use” application (ITU). In the U.S., if one has not yet commenced using a trademark, but plan to do so in the future, one may file an ITU based on a bona fide intention to use the trademark in the future. Doing so provides the registrant with the benefits of constructive use and priority that “relates back” to the original filing date. This is precisely the type of registration Blue Ivy’s parents, Jay-Z and Beyonce, have pursued. In other words, they are not yet using the name “Blue Ivy” in commerce, but they are claiming that they intend to do so in the future and, if/when they do, in terms of priority, they will be deemed to have commenced their use on January 26, 2012, the date of their ITU registration application.
2. Is this a first or is there precedent for it?
This is certainly not a first. For example, Ford Motor Company registered “Edsel”, the first name of Edsel B. Ford, son of the company’s founder. The Edsel was an automobile manufactured by Ford, but the name has become synonymous with failure because the car never gained popularity and Ford lost millions of dollars on it. Nonetheless, Ford continues to maintain five live trademark registrations for the name Edsel covering a variety of product categories.
3. What do Jay-Z and Beyonce gain from this?
Owning a federal trademark registration provides a number of advantages. Most importantly, it provides a legal presumption of their ownership of, and exclusive right to use, the name nationwide on or in connection with the goods/services listed in their registration. Other benefits include:
- Public notice of their claim of ownership (to counter any defendant’s claim of innocent infringement);
- The ability to bring an infringement action in federal court;
- The use of the U.S. registration as a basis to obtain registration in other countries;
- The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
- The right to use the federal registration symbol ®; and
- Listing in the United States Patent and Trademark Office’s online databases.
4. What do you think Jay-Z and Beyonce will use the trademark for?
Blue Ivy’s parents were obligated to describe their intended uses in their ITU application. Here are the products and services they included grouped in accordance with certain international trademark classification numbers: (more…)