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Re:Marks on Copyright and Trademark

Beyonce and Jay-Z’s “Blue Ivy Carter” Trademark Still Has Chance

Media outlets have been buzzing over the purported denial of Beyonce and Jay-Z’s BLUE IVY CARTER trademark.  On October 16, 2012, the United States Patent and Trademark Office (“USPTO”) granted a federal registration to Veronica Morales, a Boston-based wedding planner, for the trademark BLUE IVY (U.S. Registration No. 4224833) covering event planning services. Morales, who claims use of the BLUE IVY trademark since 2009, obtained her federal registration before Beyonce and Jay-Z despite filing her federal application one month later.  A number of reporters incorrectly state that Morales’ BLUE IVY registration has derailed any opportunity for Beyonce and Jay-Z to secure rights to, let alone a federal registration for, their BLUE IVY CARTER trademark. Of course, such an assertion demonstrates a clear misunderstanding of the highly specialized and nuanced area of trademark law.

This past January, Beyonce and Jay-Z, under the guise of BGK Trademark Holdings, LLC, filed an intent-to-use application with the USPTO for the trademark BLUE IVY CARTER (U.S. Serial No. 85526099) for use in connection with a wide range of goods and services including everything from cosmetics, DVDs, CDs, baby goods, and mugs to retail store and entertainment services (the “BLUE IVY CARTER Application”). Unfortunately, Morales’ federal application, which was filed in February, passed through to registration without much delay, while the BLUE IVY CARTER Application is currently suspended pending the disposition of a prior federal application filed by CBH By Benton Clothier LLC (“CBH”) for the trademark BLUE IVY CARTER GLORY IV.  Since it appears that CBH’s application has been abandoned, the possibility still remains for the couple to obtain a federal registration for their precious baby girl’s name subject to the correction of any remaining informalities issued against the BLUE IVY CARTER Application (See February 7, 2012 Office Action) and, most importantly, the commencement of actual trademark use in U.S. commerce.

In a nutshell, Morales’ claimed trademark rights in BLUE IVY, and the federal registration for same, does not necessarily prevent Beyonce and Jay-Z from securing trademark rights in or a federal registration for BLUE IVY CARTER for goods or services unrelated to event planning services.  Trademark rights are jurisdictional and only apply to the specific goods or services on which it is being used in commerce, not to all goods and services worldwide.  Therefore, Morales does not have rights to the BLUE IVY mark for all goods and services, just event planning services and perhaps related goods and services. The same limitation applies to Beyonce and Jay-Z, despite their “kitchen sink” approach in the BLUE IVY CARTER Application, and all other current or prospective trademark owners.

Indeed, Morales may have staked her claim to the purported BLUE IVY mark in the event planning space, but not necessarily in other categories, such as clothing, music, cosmetics, or product merchandising. These categories, among others which are unrelated to event planning, are still fair game for the proposed BLUE IVY CARTER trademark.

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