Pregnant superstar Beyoncé has filed an application to register her 5-year old daughter Blue Ivy Carter’s name with the U.S. Patent and Trademark Office (“USPTO”) for use on everything from hair care to clothing, mobile devices and video games, among a number of other classes of goods.
As you may recall, shortly after Blue Ivy’s birth, Beyoncé and husband Jay Z filed to register “Blue Ivy Carter” with the USPTO in 2012 in 14 classes of goods, including cosmetics/fragrances, baby products, kitchen supplies, hair accessories, playing cards. etc. but were unsuccessful, largely because they were unable to show that they had actually used the trademark. As you may know, actual use of a proposed mark is required for registration with the USPTO.
A quick trademark lesson: This time around – just like last time – Jay Z and Beyoncé filed a 1B application (as opposed to a 1A application), which means that they have not yet used the “Blue Ivy Carter” trademark but intend to do so. As a result, after a successful period of publication for opposition (assuming no one opposes the mark), they will receive a Notice of Allowance (“NOA”). The NOA is not a formal registration of the mark, but it is an indication from the USPTO that the mark can be registered after an acceptable Statement of Use is filed – aka, after the Carters provide documentation that the mark has been used in commerce – or they file for a 6 month extension.
Per 37 CFR 2.88, the Statement of Use “may be filed only when the applicant has made use of the mark in commerce on or in connection with allof the goods or services, as specified in the notice of allowance, for which applicant will seek registration in that application, unless the statement of use is accompanied by a request in accordance with § 2.87 to divide out from the application the goods or services.”
Thus, Jay Z and Beyoncé WILL have to use the mark in order to keep it, and they will have to use it connection with each of the 14 classes of goods in which they filed register the trademark.
Turns out, the famous couple apparently moved to register the mark – the first time around – in order to prevent others from doing so (which is not exactly how the trademark registration system works in the U.S. However, first-to-file is a popular tactic in China). Jay Z told Vanity Fair in 2013: “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.”
It is unclear if this time around will be any different (or whether they will abandon the mark as a result of failing to actually use it).