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Beyonce with twins Sir and Rumi in an announcment on Instagram with over 9 Million likes Instagram

Beyonce and Jay-Z are never far from the headlines. This summer they’ve been making legal news by applying to trademark the names of their newborn twinsSir Carter and Rumi Carter.

It’s not the first such effort for the couple, Beyonce Giselle Knowles-Carter and Shawn Carter, and their company BGK Trademark Holdings, which is represented by Latham & Watkins counsel Jonathan West. BGK trademarked “Blue Ivy Carter,” the name of their first child, in 2013 but later abandoned the mark. The couple’s new application this year has run into opposition from an existing company called Blue Ivy.

We spoke with Knobbe Martens partner Ian Gillies, a former professional musician who now practices IP law, about why celebrities would trademark their children’s names, and the trademark lessons for everyday clients.

Q: Why would someone trademark the names of their children?

A: There’s sort of a big-picture answer to that question, which is that celebrities are no longer focusing on one thing. The days of rock ‘n’ roll stars selling concert tickets, T-shirts and music recordings have gone away, particularly with the decrease of music sales and things like that. So you’ve got celebrities trying to expand their reach into other areas that maybe, historically, they didn’t. You’ve got Sammy Hagar selling tequila companies and Aston Kutcher is known for his venture capital efforts.

Q: Any other reason?

A: I think a bigger reason is tied also to privacy and preventing others from capitalizing on their children’s names. Some states … have publicity rights [laws] to help with privacy and the use of a celebrity’s likeness. Trademark will give them additional protection to prevent others from capitalizing on their children’s name, both from a privacy standpoint and from an economic standpoint.

Q: This isn’t the first time Beyonce has tried to register one of her kids’ names.

A: Blue Ivy Carter was originally applied for [in 2013], then it went abandoned and they reapplied for it last year.

Q: There already was a company named Blue Ivy, and that company has challenged the application, is that right?

A: What’s called a trademark opposition was filed against Blue Ivy Carter by a company called Blue Ivy, which looks to be a wedding planner. [The wedding planner] has filed an opposition, which is just a way of preventing the Blue Ivy Carter mark from registering. I have no idea of how it will play out, but one of the factors [to be weighed by the PTO] is likelihood of confusion over another person’s mark. …

What was applied for was just about every conceivable product or service under the sun. [Beyonce and Jay-Z] filed that application for clothing, for hair accessories, beverages, promotional items like key chains, bags, books, teething rings, baby carriages, strollers as well as entertainment services. So they’re trying to get rights on all of that, and Blue Ivy, owned by this other person, is just for a wedding planner. So one way that might play out is they might settle the case, and allow each other to co-exist.

Q: Beyonce and Jay-Z described all those products. But they haven’t actually introduced products like that into commerce yet.

A: This is an intent-to-use application, which is unique somewhat to the United States. You can file an application even though you’re not selling products or offering services in commerce yet. It establishes the line in the sand for your application, and ultimately once you get through the U.S. Patent and Trademark Office … it will first publish for opposition. The U.S. Patent and Trademark Office says, “OK, we think we’re ready to give you the rights to this trademark application. But first we want to allow others to look at it, and if they think they will be harmed by your application moving forward, then they can oppose it.” And that’s what happened with Blue Ivy.

Depending on what happens with the dispute, once it’s allowed, then they have three years to use the mark in commerce for all those goods and services. At the end of that three-year period, if they have not provided evidence of how they’re using Blue Ivy Carter in commerce for each and every one of those goods and services, then they’ll need to cancel those.

Q: From what I’ve read, one of their problems is that Jay-Z said in a published interview that they were applying only to exclude others—like you were saying, for privacy.

A: Yes. The general policy behind trademark law, you have to have a true intent to use the mark in commerce. If you make public statements that disparage that intent, it could cause issues with getting your application ultimately to register. An application might be tied to privacy and preventing others, but you can’t solely rely on that reason without having a true intent to use the trademark in commerce.

Q: What are some of the takeaways for everyday clients from this saga?

A: You pay for your application per class. So some clients, if they have the money, they’ll do similar strategies, where they file it in all these different classes of goods and services. It’s not very common to have 10, 12 goods and services, because you’re paying almost $300 in government fees, never mind attorneys fees. But it’s not uncommon for clients to have all these really big, broad ideas of where they want their business to go, and grow, up front. But they don’t realize how quickly the three years can come up.

Q: How developed does a product have to be to be considered “in commerce”?

A: It’s a fairly low bar. It can’t be fictitious or fraud. If I’m coming up on that three-year date I mentioned, and I build a prototype in my garage, and I call up my brother and say, “Hey, can you send me an order form through our website, and I’m going to mail it to you,” [that won't do]. But there’s some case law, it’s a pretty low threshold. If you sell as little as one product, and it’s a legitimate sale to a legitimate customer going across state lines or to a foreign country, that would constitute use in commerce. But you’d have to have ongoing use, without an intention to abandon.

Q: I understand you were a professional musician before becoming an IP lawyer. Did you encounter any IP disputes during your previous career?

A. No. We sold some records, we played some shows with some well-known bands. When we wrote the songs together as a band we resolved for the most part any questions among ourselves in terms of who was the copyright owner for the lyrics and melodies. The long time I did it, it was not without disputes, but they were not from an IP standpoint.

Scott Graham writes about intellectual property and the U.S. Court of Appeals for the Federal Circuit. Contact him at sgraham@alm.com. On Twitter: @ScottKGraham.

 

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