After a 3-year trademark opposition battle, a tribunal of judges from the Trademark Trial and Appeal Board (TTAB) have recently dismissed a trademark opposition proceeding, thereby clearing the way for Jay-Z and Beyoncé to secure a trademark for their first daughter’s name “Blue Ivy Carter” (see U.S. Serial No. 86883293).
The opposition was originally filed on May 10, 2017 by Veronica Morales (see TTAB Opp. No. 91234467). Morales has owned and operated a wedding planning and entertainment business named “Blue Ivy” since 2009. Morales also obtained a trademark for ‘BLUE IVY’ in October 2012 (See U.S. Reg. No. 4,224,833). Morales filed her opposition to the ‘BLUE IVY CARTER’ application on the grounds of having a lack of a bona fide intent to use the mark, a likelihood of confusion, and defrauding the USPTO.
Morales’ three main arguments can be broken down like this:
Lack of a bona fide intent: At the time of filing the trademark application for “BLUE IVY CARTER,” the applicant (BGK Trademark Holdings, LLC) did not have the required intent to use the mark in commerce. BGK filed a separate trademark application in early 2012 (shortly after Blue Ivy Carter was born), and that trademark application was designated as abandoned in 2016 by the USPTO for failure to file a Statement of Use (i.e. failure to show evidence of the use of the mark in commerce) (see U.S. Serial No. 85526099). BGK is just repeating the same cycle again with this trademark application, with no actual intent to use the mark.
Likelihood of confusion: Morales claims to own common law rights in the mark BLUE IVY for entertainment related services. The BLUE IVY CARTER mark is “substantially similar” to Morales’ BLUE IVY mark “in sight, sound, meaning and overall commercial impression.” A registration for BLUE IVY CARTER should not be granted to BGK because the use and registration of that mark is “likely to cause confusion, deception, and/or mistake” with Morales’ BLUE IVY mark.
Fraud: Beyoncé and Jay-Z (whose real name is Shawn Corey Carter) are the sole owners of their holding company, BGK (which are the initials to Beyoncé’s maiden name, Beyoncé Giselle Knowles). Both the current and the original (abandoned) trademark applications for BLUE IVY CARTER list the same 14 classes, with an identical list of goods and services. In a 2013 Vanity Fair article, Jay-Z specifically mentioned that he and Beyoncé were trademarking the name “merely so that nobody else could” and that it “wasn’t for us to do anything.” This admission of a lack of intent to use the name constitutes defrauding the U.S. Patent & Trademark Office. Furthermore, Jonathan Schwartz, the former Executive Vice President of BGK, was filed the original BLUE IVY CARTER trademark application on Beyoncé’s behalf, and was later fired by Beyoncé herself after he pleaded guilty to embezzlement, “schemes to defraud others, means of false representations, and the concealment of material facts.”
In the corrected final decision of the opposition proceeding, TTAB Judges Cataldo, Greenbaum, and Lebow address all of Morales’ arguments. In the opinion (written by Judge Lebow), the Judges discuss the likelihood of confusion argument, stating that while the two marks are “fairly similar in overall sound and appearance” and are “more similar than dissimilar as to appearance, sound, connotation and commercial impression,” Morales failed to show that listed goods and services between the two marks are related, or any relation that would give rise to the mistaken belief that they emanate from the same source. They also pointed out that Morales failed to show any evidence that the goods and services (of each mark) are offered in the same trade channels or to the same classes of purchasers. The Judges state that Morales is throwing the “identification of goods and services against a wall, hoping something will stick.”
In regards to a bona fide intent to use, The Judges state that the existence of one abandoned application to register the same mark for the same goods and services is not enough to demonstrate a pattern of bad faith on BGK’s part. The Judges also discussed Jay-Z’s statements in the 2013 Vanity Fair article, declaring that Jay-Z is not a party to the opposition proceeding, his statements in the article “are not supported by any guarantees of trustworthiness, much less “sufficient” ones,” and his statements are “hearsay within hearsay. . . and therefore are particularly unreliable” (because he made his statements to a reporter, who then wrote and published an article purportedly based on those statements).
Finally, with regards to fraud, Judge Lebow’s written opinion states that Morales failed to show that BGK lacked a bona fide intent, her claim for fraud fails. They point out the standard for defrauding the USPTO, stating that “a party opposing registration of a trademark on the ground of fraud bears a heavy burden of proof . . . Indeed, the very nature of the charge of fraud requires that it be proven “to the hilt” with clear and convincing evidence. There is no room for speculation, inference or surmise and, obviously, any doubt must be resolved against the  party” [filing the opposition].
The Judges dismissed all three of Morales’ claims, thereby dismissing her opposition proceeding.
If no other party files an opposition proceeding before the end of the opposition period, then BGK will be in the clear for proceeding with obtaining the trademark registration for BLU IVY CARTER, provided that they can actually provide a statement of use this time around.