IP-related thoughts on the trademark registration of “Blue Ivy” or “Blue Ivy Carter” by Beyoncé and Jay-Z.
When the parents – Jay-Z and Beyoncé – had their daughter in January 2012, they tried to trademark the name given to her – “Blue Ivy”. The trademark application was opposed by a wedding planning company based in Boston which had been formed 3 years earlier – in 2009 – before the parents have their daughter. The Trademark Trial and Appeal Board (TTAB) sided with the arguments of the existing company that has trademarked its business operation name – “Blue Ivy”. Sequel to this denial, last month (May 2017), the parents made another move to secure the trademark again, this time with a fortification. They wished to trademark “Blue Ivy Carter” instead of the prior “Blue Ivy” that was denied. The plausible reasoning is that adding “Carter” to the trademark would thin the exact name of the existing trademark – “Blue Ivy”. The wedding planning company has opposed the application again, and the TTAB is about to issue a ruling on denial or grant.
As an IP specialist, some issues ordinarily comes to mind. The first is the fact that recent developments have tried to blur and expand the main function of a trademark. There are several articles and writings by other IP specialists, and lawyers claiming that the function of trademark includes guaranteeing quality[1], that it serves advertisement purposes, that it’s a tool for strengthening the brand of the company, that it is an investment tool, a communication tool etc. These arguments are not wrong, US courts, and especially the CJEU in Europe from their case law jurisprudence have both expanded the functions of trademarks. But a good understanding of trademark law shows that the only and ideal function of a trademark is to show origin/identification (i.e. when a consumer sees a mark on an item, he can tell the manufacturer or the service provider). The primary function of a trademark is the ‘origin’ function, other (developed) secondary functions can follow[2], but they are only secondary, and not the actual function of a trademark. Although this is not the position in the US, as US courts have muddled up the functions of trademark too, so much that the IP mechanism – trademark – is now considered as do moral rights in continental European jurisdictions[3].
The problem faced by the parents in registering their daughter's name could have been eased if IP offices and courts restrict the functions of a trademark to what it was meant for – the “origin” function. The present problem and the ones that are still imminent are upshots of an expansion and a blur of trademark singular function. Applying the ideal function of a trademark to the scenario, it would seem consumers would be able to differentiate between the origins of what the two bodies would be doing. Beyoncé and Jay-Z intend to sell products with the “Blue Ivy” trademark, while the Boston-Based company provides wedding planning services, if they both use the “Blue Ivy” trademark, and we restrict the function of a trademark to its ideal function, it would seem both parties can effectively use the mark. However, because we have expanded the functions of trademark and the TTAB now considers the brand, advertisement purpose, quality and the rest, instead of ‘confusion as to origin’ solely, the family’s application was denied the first time and faces a possible denial the second time.
It is high time for the legislature to have a sit-down and recast the Lanham Act especially. Denying trademark registration just for the similarity of name purposes or where same is thought to offend other trademark functions are not good grounds for denying a trademark registration application. This suggestion is made on the idea that each case is fact-specific, in this present case, there is really no reason why the two trademarks cannot co-exist, especially if the Beyoncé family agree to restrict the use of their mark to products alone as demonstrated in their application. This is true since the use of the marks (currently, and as proposed) are in dissimilar categories in the Nice Classification.
Another issue is whether the TTAB should deny the current second application that sought to register “Blue Ivy Carter” – the full name of the parent’s daughter. The Trademark Manual of Examining Procedure in its Chapter 1300 makes some provisions required for trademarking personal names. Although the provisions relates to using one’s personal name as a service mark, and the Beyoncé family intends to use the “Blue Ivy Carter” mark for products, still, the explanations in the Manual and case law offers some guidance and shows two main requirements that the Beyoncé family might not be able to overcome to successfully register the name.
“Personal names can function as marks only if they identify and distinguish the services and not just the person” – see TMEP 1301.02(b). What this requirement suggest is that one, the personal name must identify the applicant as the person, and secondly, the personal name must relate to the services (or goods, for explanation purposes) referred to. For example, if someone wants to trademark BING (his personal name) for stationery purposes. He must first prove that BING as his name, when mentioned anywhere in that locality, creates a depiction in people’s mind that they are referring to him and not another BING somewhere else in that locality. Everyone must believe he is the BING being referred to when the name is mentioned. Secondly, BING must identify and distinguish a service/goods, i.e. consumer’s confusion as to where a good or product come from must be obviated.
The next question is when one mentions “Blue Ivy Carter” who do one think is being referred to?, no doubt, majority of Americans would believe this to be Beyoncé’s daughter, although this is very subjective, as we most likely have other people answering that exact name. However, let’s assume people believe the daughter is the one being referred to. On the other limb, it seems the family has to have used the name in respect of the products for which they intend to use the trademark, and acquire some distinctiveness before they can apply for a trademark. From the Manual, “personal names (actual names and pseudonyms) of individuals or groups function as marks ONLY if they identify and distinguish the services recited and not merely the individual or group.” So, first, for a personal name trademark registration application to be successful, a person’s name has to be so distinctive that consumers automatically thinks of that particular person upon hearing that name, and not another person with that name. Then, in addition, the use of that name must relate to a service/good, they must distinguish it from another similar type of goods/services. A good explanation of the second limb of the requirement is In Re Mancino[4], in denying registration of the personal name as a trademark, it was held that although “BOOM BOOM” would be viewed by the public solely as applicant's professional boxing nickname – there is no problem with that – but it won’t be viewed as an identifier of the service of conducting professional boxing exhibitions – for which purpose trademark is sought.
From the outside, it doesn’t seem EVERYONE would think “Blue Ivy Carter” refers to Beyoncé’s daughter although there is no denying that MAJORITY will, and although the law does not require the “everybody” rule, it is obvious the law requires something close to that. Also, the name has not even been used in respect of any product yet so its distinguishing prowess is yet to be determined. The combination of these two requirements is a huge hurdle likely to prevent the “Blue Ivy Carter” name from being registrable.
Another thing is that the consent of the person whose name is to be trademarked needs to be obtained before such use. Thus, where a person like Beyoncé is not trademarking her own personal name, but that of her daughter – another person – she must obtain the consent of her daughter (the same requirement was pressed in the Sarah Palin trademark application in 2011). Blue Ivy Carter is just 5, and although one cannot deny or argue that she would give her [ready] consent, it is confusing whether the TTAB would allow the minor to give consent at age 5 instead of the majority age which at the earliest starts at age 16 in the most liberal US State. Even if the age of consent is shift back for the purpose of IP, it can’t be shift back to age 5, since that would ridicule the law as an instrument upon which IP relies for existence. IP has to compliment the law and not the other way around.
In conclusion, every developed jurisdiction needs to rethink the functions of trademark, the legislature and judiciary must revisit the actual function of a trademark, and avoid all these other new and secondary functions which are highly subjective and open to criticisms. Trademark as an investment should be left for companies to deal with, brand development should also be left for manufacturers to maintain, communication and advertisement issues should be separated from trademark law and relegated to advertisement law discussions, so also is ‘quality’ of goods and consumer protection – which should be handled by competition law. Trademark law has no concern with all these alien issues.
The application of the Beyoncé family would most likely be denied again for two reasons. One, the functions of trademark in the US is now broad than necessary, and secondly, the hurdles created by the Trademark Manual as regards registering/trademarking one’s personal name as described above are rather too high, and in this case almost impossible as the subject cannot give an “informed” consent at age 5. The only [advisable] solution for the Beyoncé family thus lies in the outright purchase of the “Blue Ivy” trademark from the Boston-based wedding planning company. That way, the wedding planning company can change its services to products the Beyoncé family contemplates using the trademark for, and ownership can be exchanged by filing relevant forms with the USPTO[5].
Another option is a “co-existence trademark-use contract” between the Beyoncé’s family and the Boston-based company, although it is highly unlikely that the USPTO will register identical marks based on a contract by parties or that the court would enforce it. It would mean that while the Boston-based mark is registered, the Beyoncé family can use similar mark – without registration, and without risking an infringement suit by the Boston-based company. However, this type of contract is fraught with problems and uncertainties, including problems imminent as a result of expansion of business overlap, breach of contracts, antithrust issues, public interest reasons might make the government interfere and stop concurrent use, unenforceability of the contract by the court, different interpretation given to terms by the court in case a dispute arise, also, the “confusion” which trademark intend to prevent can be made licit via a co-existence use of trademark contract etc. The co-existence trademark-use contract between Apple Corp (a record label) and Apple Computers (an electronic company) in the 1990’s is quite instructive in this respect, this type of contract is not advisable unless it’s the last resort.
For developing countries, like Nigeria, laws and case laws should reflect the traditional function of trademark solely, and not the newly improvised functions.
[1] Georgios I. Zekos, Trademarks and Cyberspace, 9(5) THE J. OF WORLD INTELL. PROP. 496, 500 (2006).
[2] RE-EXAMINING THE FUNCTIONS OF TRADEMARK LAW, Mohammad Amin Naser, Copyright ? 2008, Chicago-Kent Journal of Intellectual Property, 8 Chi.-Kent J. Intell. Prop. 99, at page 1
[3] Port, Kenneth L., "The Expansion Trajectory: Trademark Jurisprudence in the Modern Age" (2010). Faculty Scholarship. Paper 199.
[4] 219 USPQ 1047 (TTAB 1983)
[5] United States Patent and Trademark Office