BLUE IVY CARTER: What to Get a Child Who Has Everything? A Trademark Registration.

Since the birth of their first child, Blue Ivy Carter, last month, Beyoncé and Jay-Z are no doubt experiencing all of the joys of first-time parenthood.  But they are struggling with at least one parenting issue that most of us don’t have to worry about:  trademark applications for their baby’s name.  Beyoncé’s company,  BGK Trademark Holdings, LLC, recently filed an intent-to-use trademark application for the mark BLUE IVY CARTER for use on a wide range of goods and services, including fragrances, key chains, baby strollers, jewelry, mugs, hair accessories, balls, product merchandising services and entertainment services, to name a few.  But Beyoncé and Jay-Z were not the first applicants for the BLUE IVY CARTER trademark.  Two other entities beat them to them to the Trademark Office. 

First, just days after Blue Ivy’s birth, Joseph Mbeh, a clothing designer, applied to register the mark BLUE IVY CARTER NYC in connection with infant, toddler and junior clothing.  The Trademark Office acted with unusual promptness in issuing an office action refusing registration of the proposed mark.  Though it typically takes the Trademark Office approximately 3-4 months to act on a newly filed application, it took the Trademark Office only 14 days to refuse registration of the mark.  The examiner refused registration of the mark based on Section 2(d), citing a likelihood of confusion based on the prior registration of the mark BLUE IVY for retail store services (a registration issued to a Wisconsin-based company in August, 2011, months before the birth of Blue Ivy).  Interestingly, the examiner notes that the BLUE IVY and BLUE IVY CARTER NYC marks are similar because they both contain the words BLUE IVY and concludes that the applicant’s goods are “closely related” to the registrant’s retail services.  The examiner also refused registration based on Section 2(a) on the grounds that the proposed mark falsely suggested a connection with Blue Ivy Carter, who the examiner described as a “famous infant” (who, at the time of the office action was two weeks old).  The examiner proceeded to refuse registration based on Section 2(c), given that the proposed mark includes the name of a particular individual, Blue Ivy Carter, who the examiner characterized as a “famous individual, who is so well known that the public would reasonably assume a connection” between the baby and the trademark applicant.  Because Blue Ivy is a minor, the applicant would need the consent of her parent(s) in order to overcome the refusal.  In response to the office action, Mbeh expressly abandoned the application.         

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