Beyoncé Giselle Knowles-Carter and her husband Shawn Corey Carter, better known as Jay-Z, are engaged in a long-standing struggle to preserve the BLUE IVY CARTER brand, named after their oldest daughter. The issue revolves around whether or not they intend to use the brand, the so-called intent to use .
After the birth of their daughter in January 2012, Beyoncé and Jay-Z registered the name BLUE IVY CARTER as a brand based on intent to use with the US trademark agency (USPTO) for products and services in fourteen classes.
Veronica Morales from Glendale, California, founded a company named Blue Ivy in 2009 - three years before the brand's depot. Morales is a wedding planner and also registered the BLUE IVY brand name in October 2012 with the USPTO for services from a wedding planner and for event organization.
Intent to use
The American trademark law has the provision that an intent to use statement may only be submitted if the applicant intends to use a bona fide to use the trademark in trade. An intent to use statement must be submitted to the USPTO before the mark is published in the trademark sheet (on average 6 months after filing). If that does not work, then one can get a maximum of 5 installments of 6 months postponement. So in total about 3 years.
Beyoncé and Jay-Z have each requested an extension for submitting a statement of use. In February 2016, the USPTO stated that Beyoncé and Jay-Z had failed to demonstrate the use of the brand for products and services in all fourteen classes involved. The registration of the mark was subsequently canceled.
A month earlier, in January 2016, Beyoncé and Jay-Z submitted a new application for the BLUE IVY CARTER brand for the same fourteen product and service classes as the first application from 2012 and again on the basis of intent to use .
Morales then filed an opposition to Beyoncé and Jay-Z's second trademark application. Morales is of the opinion that Beyoncé and Jay-Z do not intend to use the brand in trade and that the intent to use statement is not valid. The opposition is based on Morales' brand from 2012 and it believes that there is a risk of confusion due to the strong similarity of the brands and the similarity of the products and services. She is also putting forward an interview in the 2013 Vanity Fair magazine, in which Jay-Z states that he and Beyoncé mainly registered their daughter's name to prevent third parties from using that name to hitch a ride on the awareness of their daughter.
The latest developments in the case are that Morales has demanded that Beyonce and Jay-Z provide proof of use of the BLUE IVY CARTER brand.
The question is whether it was wise for Beyoncé and Jay-Z to submit the second application exactly the same as the first. Perhaps it was better to make some adjustments to the product and service description to show that this is a new original application. Jay-Z's comment in the Vanity Fair interview is also not useful, since it does not show any intention to use the brand.