Remember when Jay Z and Beyonce filed to federally register the name of their baby, Blue Ivy? Well, the rapper-turned-Barneys collaborator is speaking out about that trademark in an interview with Vanity Fair – and he seems confused. According to the piece, Jay tells Vanity Fair’s Lisa Robinson that he and Beyoncé trademarked their daughter’s name simply so others couldn’t exploit it for profit. “People wanted to make products based on our child’s name,” he says, “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.” Well, it’s actually not that simple, Jay.
We took another glance at the US Patent and Trademark Office’s records to see if there were any updates, and it turns out, Jay and Beyoncé are still waiting on federal registration of the Blue Ivy Carter (which potentially covers 14 classes of goods/services, which range from cosmetics/fragrances and handbags to baby strollers and sports memorabilia).
Also worth noting, Jay Z mentions he and his wife do not have intentions of using the “Blue Ivy Carter” trademark.
However, if they want to keep the mark (assuming the USPTO approves it, of course) they will have to use it because that’s how trademark law works, but more specifically, because of the type of application they filed.
A quick trademark lesson: Jay 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 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 and Bey WILL have to use the mark after all, in order to keep it, and they will have to use it connection with each of the 14 classes of goods that they filed to trademark the name in.
However, assuming that they divide their initial application into a bunch of separate applications (which would allow them to use only one or two or however many classes of goods in commerce in order to claim ownership over those, without having to slap Blue Ivy’s name on playing cards in order to keep the trademark), the next question is how many classes of goods/services they will choose to keep. More to come …