- in Trademarks
It’s March 18, 2019, Beyonce and Jay-Z’s first born, Blue Ivy Carter is 7years old and her parents are still battling to secure her trademark. The couple first filed for trademark protection in an intent to use application in January of 2012. An office action was issued for likelihood of confusion with another company however the problem was rectified when the Carters amended their application. This application was approved for use, which gave the Carters’ six months to began using the trademark in association with the goods listed in their application.
Let’s break this down from the beginning. Trademarks protect brand identifiers. Brand identifiers are those things that identify the source of a good or a service. We recognize them as trade names, logos, and slogans but trademarks also protect colors, sound, smells, and shapes.
In order to qualify for federal trademark protection you must satisfy 3 requirements.
1. The mark must identify the source of a good or service
2. The good or service must be available in interstate commerce
3. The mark must be unique
There are two applications, an in use application that says hey I’m currently using this mark in interstate commerce and an intent to use application that says I’m not using this mark in commerce but I have a boa file intent to use the application in commerce. So in the case of an intent to use application there is a 4th requirement, bonafide intent to use.
With an intent to use application your application is not approved for registration until you submit proof that you are using the mark in commerce. Instead of registration you will be issued a notice of allowance, which what the Carter’s where issued in January of 2013.
Now once the notice of allowance is issued, the applicant has 6 months to provide proof of use or risk abandoning their trademark application. If the mark is not used in commerce within 6 months, the applicant can request an extension. An extension gives the applicant an additional 6 months to use the mark in commerce. The applicant can file for an extension every six months up to three years, which is what the Carters did before there application was eventually abandoned for failure to provide a Statement of Use. So the initial application was abandoned on February 23, 2016. A second application was filed in January of 2016 however opposition was filed during the process by Veronica Morales who does business as Blue Ivy. In October of 2012, during the Carters’ first application, Morales filed and received a registered trademark for Blue Ivy for her event planning business. When the Carter’s filed their second application she objected on the grounds that it would affect her registered trademark.
Let’s talk about objections for a moment. During the trademark process if the examine attorney see no conflict or any other reason why your trademark application shouldn’t be approved, the application will published to the public for 30 days to allow anyone with a real legitimate interest in the registration of the mark to oppose registration if said registration will damage their own mark in someway. Morales filed the objection alleging the Carter’s did not have a Bonafide intent to use the mark in commerce and simply filed the application so that no one else could. In addition to likelihood of confusion, Morales also alleged fraud against the USPTO.
This is a great way to learn about bonafide intent.
When you file an intent to use application with the USPTO you submit your application under oath that you have a real intent to use the trademark as indicated in the trademark application. There are several factors that are considered to determine if a bonafide intent exist
1. Statements indicating registration is merely to reserve. In this case Jay-Z was asked in a Vanity Fair interview about allegations in the media that he and Beyoncé trademarked their daughter’s name to do a line of baby clothes. Jay said they did it merely so no one else could. “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. First of all, it’s a child, and it bothers me when there’s no [boundaries]. I come from the streets, and even in the most latrocious shit we were doing, we had lines: no kids, no mothers—there was respect there. But [now] there’s no boundaries. For somebody to say, This person had a kid—I’m gonna make a fuckin’ stroller with that kid’s name. It’s, like, where’s the humanity?”
2. Do products actually exist. Objections move your trademark application from the examining attorney’s desk into litigation proceedings. During these proceeding each side gets to gather information from the other in what is known as discovery. Morales ask the Carters to produce the products that are to be used with the trademark.
3. Is the product or service feasible? If it can’t be produced there is no product, if there is no product there is no trademark.
4. History with the particular product. In this case Morales points out that this is the second application filed by the Carters’ after the first application was abandoned for failure to actually use the mark. If the Carter’s can’t produce actual products, this too will be used against them.
5. Have potential customers been located? You need customers to have a business. Have you identified your market and how you will reach them?
6. Have firm decisions been made. There are certain decisions that need to be made in business prior to launching have you made those decisions? Example will you sell your product online or offline. If online what platform will you use? If offline where will you sell your products.
7. What have you done since you filed your application?
There were so many lessons to pull from. Our top 3 takeaways are
1. You can’t file a trademark application to prevent other people from using the mark
2. Don’t file an intent to use trademark application unless you truly intend to use the mark in commerce
3. The intent is more than a someday type of thing. You must be able to provide proof that you are working on bringing the product or service to the market.
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