Can you really trademark a babys name? Absolutely. Why would you want to? The answer is more applicable to your business than you may realize.
In late January, Beyonce and Jay-Z set off a firestorm when they applied to register their newborn daughter’s name as a trademark. The couple applied to register the trademark BLUE IVY CARTER in connection with a host of goods and services, everything from clothing to entertainment services.
Some have criticized the application as a shrewd business move, potentially setting forth plans to monetize the name of the famous couple’s child. Perhaps. However, if you understand a little bit more about the way our trademark system works here in the United States their efforts were, more likely than not, to make sure that others do not wrongfully capitalize off their child’s persona and not about actually capitalizing on the same for themselves.
First and foremost, understand that Beyonce’s holding company, BGK Trademark Holdings, was not the first to file an application to register the child’s name as a trademark. On January 11, 2012, just a few days after the child’s birth, a New Jersey individual filed to register the trademark BLUE IVY CARTER NYC in connection with children’s clothing. Not to be outdone, on January 20, 2012 a Long Island company applied to register the trademark BLUE IVY CARTER GLORY IV in connection with fragrances and other similar goods. Why are they always from New York or New Jersey?
It was not until after it was apparent that others were trying to capitalize on their child’s name that Beyonce’s company BGK Trademark Holdings filed its own trademark application to offensively block other’s attempts to register the name.
Aside from my personal belief that stars are entitled to privacy in their private lives and that their children should always be 100 percent off limits to media and others attempting to capitalize upon these famous families, as is the case here, there are some clear lessons you can learn from Beyonce and Jay-Z for your business which can help you avoid like trademark disputes in the future.
1. Famous People & Trademarks. First and foremost, famous people have a leg up over you and regarding the registration of trademarks. How so? Well, in fairness, it is only in connection with their names. For instance, I will never be able to register TIM TEBOW RULES—DEAL WITH IT! Any hope I had of starting my tiger blood business under the name SHEEN’S ALL CRAZY ALL THE TIME might as well go right out the window. And I can forget about that business plan to create a new video seminar SARAH PALIN: HOW TO EXTEND YOUR 15 MINUTES OF FAME. Why?
Two words: false association. You are not permitted to register a trademark that implies a false association with another and, in particular, a famous individual. As such, once you have achieved a level of notoriety, to some degree, your name is already protected as a trademark. Even if you have yet to file for the same with the U.S. Patent and Trademark Office others will still be precluded from registering your name therewith.
How famous do you have to be to be afforded this protection? Tonya Harding famous (look it up if you need to—think Olympics and knee whacking)? Paris Hilton famous? Michael Jordan famous? There is truly no bright line test. So long as your name is sufficiently well-recognized and it’s implicit that others would try to profit from said fame, it cannot be registered as a trademark with the U.S. Patent and Trademark Office without your express written consent.
2. Intent-to-Use Application. Still unsure. Well, whether you are famous or not you can always avail yourself to the protection under the United States’ intent-to-use filing provisions.
In the old days if you wanted to secure trademark rights, you had to actually begin use of a trademark. For instance, when Coca Cola wanted to bring out the now iconic Coke Adds Life slogan, they had to actually start using it before they acquired rights in the same. The problem with that? When a big company like Coca Cola wants to roll out a new slogan literally thousands of people know about it in advance, from the marketing team to production to the hierarchy who green-lighted the campaign. Back then, word would leak out and on the eve of a launch of a new multi-million dollar campaign and some unscrupulous person could rush to the U.S. Patent and Trademark Office and file for Coke Adds Life, saying they had been using it for a few months. This was a blatant attempt to profiteer off of Coke’s new campaign which would then be too far in the process to change. Too often this would result in a legitimate company having to pay off such individuals because they were the first to file and, allegedly, the first to use even if their motives were less than honest.
So what did we do? Years back, Congress, when they actually worked for the citizens of this country, passed a statute to allow individuals and businesses alike to reserve rights in trademarks they intend to use in the future. Today, you can acquire trademark rights in a trademark simply by filing an application with the U.S. Patent and Trademark Office for a trademark that you have a bona fide intent to use in the future. Provided it is available, the U.S. Patent and Trademark Office will reserve the trademark for you and, once placed in use, allow you to register the same.
So in a microcosm, what have Beyonce and Jay-Z taught you about trademark law? First, you cannot trademark a famous person’s name unless you have their permission. Likewise, if you are a famous person, you are already entitled to the protection of your name under trademark laws. Second, and more applicable to all businesses, if you have a trademark you intend to use in the future get an intent-to-use trademark application on file with the U.S. Patent and Trademark Office as soon as possible. It will reserve your rights in the future use of the trademark and preclude others from either intentionally, or unintentionally, beginning use of a like trademark that could diminish or block your rights in the same.
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