Beyoncé does not appear to have taken the steps to gain federal trademark rights in the term Lemonade, the name of her recently-released visual album, and in failing to do so, the singer may be setting herself up for problems down the road. As a long-time brand owner, Beyoncé is no stranger to trademark problems. Some may recall that after the 2012 birth of her daughter, Blue Ivy, a number of folks that had never used “Blue Ivy” as a trademark ran to the U.S. Patent and Trademark Office in unsuccessful attempts to capitalize on the name.
This kind of hassle is one of the many downsides of fame. Of course, fame also has its rewards, but such perks are not for people alone. Trademarks that have grown to become famous brands get their very own civil cause of action – trademark dilution.
This brings us to one of Beyoncé’s latest trademark dilemmas, which comes in the form of Feyoncé, a “unique” spelling of fiancé being used to sell shirts and mugs to the recently betrothed. Picture a coffee mug with “Feyoncé - He Put a Ring On It” emblazoned on the side, which should sound familiar if you turned on a radio in 2009. And Beyoncé, who has been busy selling millions of dollars’ worth of various and sundry fashion goods and other articles in connection with her registered Beyoncé trademark for nearly twenty years, is not amused. In fact, she recently filed a trademark infringement and dilution lawsuit in the United States District Court for the Southern District of New York alleging, among other things, that the use of “Feyoncé” is likely to dilute the distinctive quality of the famous Beyoncé mark.
Trademark dilution, actionable under the Lanham Act, provides the owner of a famous trademark standing to sue others for using the same or a confusingly similar variation of that mark in a way that would diminish its value. In order to prevail in a federal dilution claim, a brand owner must show that its mark is nationally famous (niche or regional fame is not sufficient) and that it is recognized by the general consuming public as a source identifier for the brand owner’s goods or services.
Unlike the likelihood of confusion analysis applied in infringement actions to all trademarks, famous and not famous, a dilution claim does not require the brand owner to show that the alleged infringer is using the mark in question in connection with the same, similar, or related goods or services. For example, a famous trademark used to sell soft drinks might suffer dilution if another company uses a similar mark to sell window blinds.
The accused mark may dilute a famous mark by blurring or tarnishment. Blurring is the whittling away of a mark’s distinctiveness. Tarnishment is harm to the brand owner’s reputation because the accused mark is used on poor quality goods or in a unwholesome context.
The defendants have not yet had to answer the complaint, so it will be a while until we hear the defense side of the story. In the meantime, there is no indication that Lemonade Marketplace Limited, the London-based company that holds rights to the “Lemonade” trademark in Class 41 – the one that covers musical performances/entertainment – intends to file suit against the singer. But we will be sure to keep you abreast of any changes.
Anthony Rufo is an Associate in Foley Hoag’s Intellectual Property and Litigation Departments, and a member of the the firm’s Trademark, Copyright and Unfair Competition and Advertising and Marketing practice groups.