Backgrounds of the case
Beyonce has filed a trademark application at the U.S.Patent and Trademark Office to protect the use of the standard character mark BLUE IVY CARTER for a wide range of consumer goods. Beyonce’s licensing business BGK trademark holding is seeking to protect the mark, which is also the name of beyonce’s daughter with husband rapstar jay Z. BGK filed BGK filed U.S. Trademark Serial No. 86883293 for BLUE IVY CARTER back on January 22nd, 2016.
On May 10th, 2017, entertainment and event planning firm Blue Ivy filed a notice of opposition to the trademark application filed by BGK Trademark Holdings. Founded in 2009, Blue Ivy has grown to serve New England, South Florida, Southern California and destination events across the world. According to the filed notice to opposition, Blue Ivy has earned industry acclaim including being recognized as one of the world’s Top 25 Wedding Planners by American media company Condé Nast. Blue Ivy and its founder, Veronica Morales, own U.S. Trademark Registration No. 4224833 covering the standard character mark BLUE IVY for event planning and management services.
Blue Ivy challenging BGK’s
Blue Ivy alleges that, although BGK Trademark Holdings is claiming the use of the BLUE IVY CARTER mark for a wide range of goods and services, that there’s no true intent to use the mark in commerce at all.
“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.”
As a result, Blue Ivy is challenging BGK’s bona fide intent to use the BLUE IVY CARTER mark. In October 2012, CNN reported that Blue Ivy was successful in overturning the previous BLUE IVY CARTER mark filed by BGK. In addition to lack of bona fide intent to use and likelihood of confusion, Blue Ivy also alleges that BGK has committed fraud on the USPTO.
BGK’s Holding filed an answer
Among BGK’s affirmative defenses include opposer’s failure to state a claim, no likelihood of confusion as well as the doctrines of laches, estoppel, acquiescence and unclean hands. BGK’s answer and affirmative defenses include was filed more than a month after Blue Ivy filed a motion to take early discovery.
BGK in opposition of the motion
BGK Trademark Holding filed a response in opposition of the motion to take early limited discovery. BGK argued that the Blue Ivy did not attempt to consult BGK “in good faith” prior to filing motion and the BGK has neither, “the ability nor the responsibility” to produce Schwartz for a deposition because he is no longer affiliated to BGK.
However in June, the administrative trademark judge at the Trademark Trial and Appeal Board, granted Blue Ivy’s motion for early discovery. It’s a little unclear why Beyonce and JayZ feel the need to squat on a trademark that includes a name, portrait, or signature that reasonably could be perceived as identifying a particular living individual, the person would need a written consent from identified individual.