Wednesday, July 15, 2020

Beyoncé's BLUE IVY CARTER Trademark Application Survives TTAB Opposition

The Board dismissed this opposition to registration of the mark BLUE IVY CARTER for a variety of goods and services in 14 classes (including musical performers (sic!), golf balls, plastic flags, postcards, and fan clubs), rejecting Opposer Veronica Morales's claims of likelihood of confusion, lack of bona fide intent, and fraud. Applicant BGK Trademark Holdings, LLC is owned by singer, songwriter, and actress Beyoncé Giselle Knowles-Carter, and "Blue Ivy Carter" is the name of her daughter, who provided consent to registration. Opposer Morales is the owner and founder of a lifestyle event planning company doing business under the name “Blue Ivy,” and has a registration for the mark BLUE IVY for event planning services. Veronica Morales d/b/a Blue Ivy v. BGK Trademark Holdings, LLC, Opposition No. 91234467 (June 30, 2020)[not precedential] (Opinion by Judge Mark Lebow).

Likelihood of Confusion: Applicant BGK argued that the marks at issue create different commercial impressions, since BLUE IVY CARTER refers to a famous child. The Board pointed out, however, that "people, including celebrities, are often known by their first name," Beyoncé being one example. The Board found the marks BLUE IVY and BLUE IVY CARTER to be "more similar than dissimilar as to appearance, sound, connotation and commercial impression."

As to the involved goods and services, there was no evidence suggesting that they are related in such a way as to give rise to source confusion. "Opposer has, figuratively, thrown the identification of goods and services against a wall, hoping something will stick."

The only goods or services that appear even marginally related are Opposer’s services of “event planning and management for marketing, branding, promoting or advertising the goods and services of others” (Class 35) on the one hand, and Applicant’s services of “product merchandising for others” and “entertainment marketing services, namely, marketing, promotion and advertising for recording and performing artists” (Class 35) on the other. But there is no evidence suggesting that those services are actually related in a manner that would be likely to cause confusion.

Nor was there any evidence that the good and services travel in the same channels of trade. "Advertising on the Internet is ubiquitous and ‘proves little, if anything, about the likelihood that consumers will confuse similar marks used on such goods or services."

Since the second and third DuPont factors weighed heavily against a finding of likely confusion, the Board denied opposer's Section 2(d) claim.

Lack of Bona Fide Intent: Opposer's claim of lack of bona fide intent was primarily based on BGK's failure to produce any documentation supporting same. BGK provided no information or documents in response to discovery requests directed to its intent. However, BGK did object to those requests and opposer did not pursue a motion to compel. Therefore the Board refused to draw an adverse inference against BGK.

Opposer Morales also pointed to a statement reportedly made by Shawn Corey Carter (Jay-Z), the husband of Beyoncé and father of Blue Ivy Carter, in a Vanity Fair magazine article:

I asked about allegations in the media that he and Beyoncé trademarked their daughter’s name to do a line of baby clothes. Jay said they did it merely so no one else could. “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. First of all, it’s a child, and it bothers me when there’s no [boundaries]. I come from the streets, and even in the most atrocious sh*it we were doing, we had lines: no kids, no mothers— there was respect there. But [now] there’s no boundaries. For somebody to say, This person had a kid—I’m gonna make a f*ckin’ stroller with that kid’s name. It’s, like, where’s the humanity?”

The Board, however, noted that Jay-Z is not a party and is not legally connected to the company. His statement cannot be attributed to the company just because he is the husband of the owner. Moreover, the statement is double hearsay, since neither Jay-Z not the reporter made that statement in "court," under oath, with the opportunity for cross-examination. And so the Board dismissed this claim of lack of bona fide intent due to failure of proof.

Fraud: Opposer's fraud claim was founded solely on the assertion that BGK submitted a false statement of bona fide intent. Since Opposer failed to prove a lack of bona fide intent, this claim failed as well.

Read comments and post your comment here.

TTABlogger comment:  In footnote 43, the Board discusses the testimonial declaration of BGK's expert witness, noting that "he is not an expert in trademark matters much less on the registrability of trademarks under the Lanham Act and the problems and considerations related thereto. This is apparent from his reference to 'trademarked' brand names, willingness to offer opinions based on facts not in evidence and, in some cases, based on no evidence at all, such as his opinion that Applicant’s mark is already famous (without evidence of use). [Empahsis added by the TTABlogger. Repeat after me: "trademark" is not a verb"].

Text Copyright John L. Welch 2020.


At 12:13 PM, Anonymous Anonymous said...

This reminds me of a writing exercise from elementary school where the teacher gave my class the last line of a short story and asked us to write everything up to that point. Here, the Board decided it did not like this opposition and labored to reject it.

For the likelihood of confusion claim, the reasoning with respect to Class 35 is contrary to precedent. The marks are nearly identical, and both the application and the registration claim services to market other services, which may include the services of performing artists. It's likelihood of confusion, not certainty of confusion.

On lack of bona fide intent, are we really going to say that applicants can refuse to answer discovery, provide no affirmative evidence of intent, and still withstand a challenge, even in the face of evidence suggesting no bona fide intent? Anyone who has ever filed a motion to compel at the TTAB has experienced the Board's collective groan, and anyone taking guidance from the TBMP would get the impression that motions to compel should only be used when absolutely necessary. The Board could have and should have considered the evidence of Jay-Z's statement under a hearsay exception. Instead, it facilitated discovery abuse in order to reach the result it wanted.

At 7:44 AM, Blogger John L. Welch said...

Thanks for the comment. I had the same thought. The Board was determined to dismiss the opposition.


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