By Steven Abreu, a member of our Trademark Practice Group
U.S. trademark applications are matters of public record. When celebrity super-couple Jay-Z and Beyoncé filed a trademark application for their infant daughter's name, Blue Ivy Carter, the public took notice.
Are trademarks suddenly in vogue? Why would two entertainers file a trademark application right after filling out a birth certificate? And what can this application teach us about filing strategies in general?
Blue Ivy Carter, the baby girl, was born on January 7, 2012. On January 26, 2012, a trademark application was filed for the mark BLUE IVY CARTER by BGK Trademark Holdings LLC, a holding company affiliated with Jay-Z and Beyoncé, for use of the mark on a wide array of goods.
A trademark registration can be a useful "offensive" tool when seeking to stop others from infringing on one's brand. Trademark registrations are often cited in cease-and-desist letters, alongside ominous language about the damages and injunctions that are available to the aggrieved letter-writing party.
Filing a trademark application for defensive purposes
However a pending application can also be useful for defensive purposes.
A trademark application filed on the basis of "intent to use," meaning that it is filed merely in anticipation of using the mark in commerce sometime in the future, can be used to defend trademark rights when a brand has yet to be commercialized. A pending intent-to-use trademark application serves a valuable defensive purpose because it holds one's place in line.
Provided that Jay-Z and Beyoncé filed their application for BLUE IVY CARTER before a second party either has used the BLUE IVY CARTER mark in commerce or has filed its own application, the celebrity couple will have superior rights in the mark once their application registers.
Second, the trademark office will refuse to register other applications for similar marks while Jay-Z and Beyoncé's application is pending. A trademark examining attorney, employed by the Trademark Office, will issue a preliminary refusal of an application if a registration or prior pending application has been filed for a confusingly similar mark. In this way, the trademark office performs a type of policing work by defending the integrity of the principal trademark register.
Additionally, when filed, the BLUE IVY CARTER application will show up in trademark searches and may serve as a deterrent to others who have ideas of launching their own BLUE IVY CARTER brand of cosmetics or of filing their own application. In this light, it makes sense that Jay-Z and Beyoncé felt it necessary to file an application now in order to defend their future ability to commercialize the BLUE IVY CARTER brand.
Bona fide intent to use a mark in commerce
As mentioned, the trademark application for BLUE IVY CARTER was filed on a wide array of goods, including fragrances, hairspray, computer bags, baby strollers, concert programs, beach bags, blouses, playing cards and soccer balls. The application was also filed in connection with a number of services, including entertainment services, musical performances, and production of motion picture films. A complete list of goods and services of the BLUE IVY CARTER application can be found here.
Just as it makes sense to file an application for the mark, it might be reasoned that it makes sense to list as many goods and services as possible in connection with the application. But when doing so, there is the important consideration of "bona fide intent."
All intent-to-use U.S. trademark applications must include an affirmation that the applicant has a bona fide intent to use the mark in commerce, on or in connection with the goods or services listed in the application. Bona fide intent is admittedly a nebulous concept, but it can be distilled as a real intent to use a mark in commerce as evidenced by all the business circumstances that surround the decision to file an application.
When an applicant's bona fide intent is in question, such intent, it has been held, may be demonstrated by objective evidence in the form of facts, documents and actions that point to a real business plan to use the mark in connection with the enumerated goods and services. A mere wish or unsupported intent to use the mark on the listed products is not enough if the application is challenged in an opposition proceeding.
In other words, Jay-Z and Beyoncé must be able to present business documents or other objective facts showing that they intend to start a line of hair ties, racquetballs, and other products emblazoned with their infant daughter's name. This might be difficult, but the couple are savvy business people with many business associates, so it is well within the realm of possibility. Furthermore, the risk of a challenge based on a lack of bona fide intent is low, and many applications are filed with a list of goods and service that at the outset might appear to be frivolous.
In fact, it is a typical filing strategy to list many goods in the initial application and then pare the list down at the time of filing an allegation of use of the mark in commerce. Marks may not be registered to U.S. applicants unless use is affirmed and demonstrated to the Trademark Office, and a first use date is entered. Thus, while it is possible (yet unlikely) that BLUE IVY CARTER will be used on all the goods listed in the application, a registration will issue in connection with whatever goods the parents are ultimately able to affirm are being used in commerce.
A typical trademark applicant must still take care not to overreach by listing goods and services which it does not have objective business plans to provide. There can be harsh penalties if an applicant lists more goods than those for which it has a bona fide intent. In one recent federal case in Oregon, a judge interpreted recent Trademark Trial and Appeal Board rulings to mean that a lack of bona fide intent on even one listed good or service in a particular class could serve to void a trademark registration for that entire class of goods or services, even if there was a bona fide intent on all of the other goods and services listed. Thus, caution is urged.
There are valid strategic reasons to file intent-to-use trademarks for marks that have yet to be commercialized, including the defensive benefits already discussed. Jay-Z and Beyoncé no doubt adore Blue Ivy Carter, the girl, enough to raise her in a strong loving environment; they have also demonstrated that they love BLUE IVY CARTER, the brand, enough to take steps to protect it from potential infringers.
While a trademark application can be very broad in the number of goods and services listed, a potential danger awaits when an applicant lacks a bona fide intent to use the mark in connection with everything contained in an application. While it generally is a good idea to file broadly, it is sensible to make sure that the scope of goods and services listed does not exceed the scope of the applicant's valid business plans for that particular brand.
© 2005-2012 Sunstein Kann Murphy & Timbers LLP, All Rights Reserved.
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