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:
- Fragrances, cosmetics, skin care products, namely, non-medicated skin care preparations, non-medicated skin care creams and lotions, namely, body cream, hand cream, skin lotion, body lotions, skin moisturizers, skin emollient, skin cleansing creams, skin cleansing lotions, all for adults and infants; hair care products, namely, non-medicated hair care preparations, non-medicated hair gel, shampoo, conditioner, hair mousse, hair oils, hair pomades, hair spray
- Metal key chains and metal key rings
- DVDs, CDs, and audio and visual sound recordings featuring musical performances; musical sound recordings; computer application software for mobile phones, portable media players, and handheld computers for use in downloading music, ring tones and video games; handheld and mobile digital electronic devices, namely, tablet PCs, cellular phones, laptops, portable media players, handheld computers; cases and covers for mobile phones and mobile digital electronic devices, namely, laptops, cell phones, radio pagers, mobile computers; downloadable web-based application software in the nature of a mobile application downloadable to handheld and mobile digital electronic devices for use in downloading music, ring tones and video games; decorative magnets, eyewear, eyeglass cases; computer bags; graduated glassware; hair accessories, namely, electric hair-curlers
- Baby carriages, baby strollers
- Key chains and key rings of precious metal; fine and costume jewelry, clocks and watches
- Books in the field of music, motion pictures, musical performers; photographs; posters; baby books; stickers; print materials, namely, art prints, color prints, concert programs, calendars, pens, post cards; gift bags; paper flags; trading cards; paper baby bibs
- Bags, namely, tote bags, beach bags, handbags, diaper bags, baby carriers worn on the body, pouch baby carriers, luggage; small leather goods, namely, leather cases, leather bags and wallets, leather purses, leather billfolds, leather key chains, leather key cases
- Plastic key chains and plastic key rings; small leather goods, namely, leather picture frames, leather key fobs, and leather key holders; plastic flags; vinyl banners, baby bouncers, baby changing mats, baby changing tables, high chairs for babies, playpens for babies
- Mugs; beverage glassware; plastic water bottles sold empty; hair accessories, namely, hair combs; baby bathtubs; drinking cups for babies
- Banners of cloth, nylon; flags, namely, cloth flags, nylon flags; towels; baby bedding, namely, bundle bags, swaddling blankets, crib bumpers, fitted crib sheets, crib skirts, crib blankets; baby blankets
- Clothing for adults, infants and toddlers, namely, shoes, shirts, pants, dresses, vest, undergarments, coats, jackets, shorts, sweatshirts, sweatpants, sweaters, blouses; clothing accessories, namely, belts, scarves, socks, gloves, earmuffs, hats, caps, tights, stockings, pantyhose, baby layettes for clothing, plastic baby bibs; footwear, headwear
- Hair accessories, namely, hair ties, hair scrunchies, barrettes, hair bands, hair bows, hair clips, hair pins, hair ribbons, ponytail holders; novelty button
- Playing cards, balls, namely, basketballs, baseballs, footballs, kick balls, rubber balls, beach balls, golf balls, hand balls, tennis balls, racquet balls, soccer balls, sport balls; dolls, baby multiple activity toys, baby rattles, baby teething rings, baby swings
- Product merchandising; online retail store services featuring music, musical recordings, motion pictures, clothing and accessories, novelty items; Entertainment marketing services, namely, marketing, promotion and advertising for recording and performing artists
- Entertainment services, namely, providing online video games, dance events by a recording artist, multimedia production services; Entertainment services in the nature of live musical performances; production of motion picture films, fan clubs
Given the large number of categories, some people may question whether this might be just a defensive move on the part of Blue Ivy’s parents. However, the law does indeed require a bona fide intent to use. And the recent Trademark Trial and Appeal Board decision regarding Spirits International B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi makes it clear that, if an applicant’s intent is challenged by a third party, the U.S. Patent and Trademark Office will require documentary evidence sufficient to establish that the applicant really has a bona fide intention to use its mark in all the relevant categories.
5. Why is it important for Jay-Z and Beyonce to trademark the name Blue Ivy? Or is it important?
As described above, it is important for Blue Ivy’s parents to apply for an ITU to preserve their priority, and by extension, ownership of the name as a trademark to denote the source or origin of Blue Ivy-branded products and services sold in commerce.
6. What if someone else wanted to name their child Blue Ivy – could Jay-Z and Beyonce sue them?
No. Trademark protection does not grant monopoly rights to a name (if that were the case then Apple Inc. could have sued Gwyneth Paltrow and Chris Martin for naming their daughter Apple). Trademark protection only prohibits the use of a name in a trademark capacity, namely, to denote the source or origin of goods and/or services branded with the trademark name. If other parents name their daughter Blue Ivy, the Carters will not be able to do anything to stop them. However, in the future, if another person named Blue Ivy wishes to sell products or services branded with her name, she may run into some legal challenges. The same will be true if she wishes to register a “BlueIvy” or similarly named website domain (e.g., www.blue-ivy.net), Facebook page, Twitter feed, etc.
7. Do celebrities usually trademark their own names?
Yes, registration is critical for celebrities who wish to license their name for eponymously-branded goods and/or services, especially in so-called “registration rights” countries as described above where ownership is based on a race to the filing office.