While Beyoncé didn’t officially announce the names of her twins until recently, the Beyhive has known for a while, thanks to a couple of trademark applications filed by the same trademark holding company she used to file Blue Ivy’s namesake mark back in 2012. The applications are for the marks SIR CARTER and RUMI CARTER and comprise broad classes of goods and services, including: metal key chains, DVDs, CDs, cellular phones, laptops, baby teething rings, baby carriages, books, calendars, pens, handbags, luggage, glassware, hair accessories, clothing, footwear, playing cards, sports balls, and many more.
The same classes of goods and services were listed for the BLUE IVY CARTER mark, but if you’re wondering where to find all the “Blue Ivy” branded merch, you’re probably out of luck. When asked in 2013 to address the rumors that they were trademarking their daughter’s name for a line of baby clothes, Jay-Z stated that they were only trademarking her name so nobody else could, claiming “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.” Assuming that the two new applications were filed for the same purpose as the BLUE IVY CARTER mark, it raises the question of whether Beyoncé and Jay-Z are committing fraud on the Trademark Office.
Filing trademark applications for broad classes of goods and services for the purpose of preventing others from doing the same is known as trademark squatting. While trademark squatting is a much bigger issue in foreign countries, it is still possible in the U.S. through intent to use (ITU) applications. By filing an ITU application, an applicant can obtain trademark rights by paying the fee and filing an application”no use of the mark in commerce is necessary. After receiving a Notice of Allowance, the applicant then has six months to file a Statement of Use to prove that they have begun using the mark in commerce.
However, the applicant also has the option of filling out a form and paying a fee to extend the deadline to file a Statement of Use for another six months. By taking advantage of this extension process, a trademark squatter can continue prolonging the deadline for years, holding rights to the mark without ever using it in commerce.
There is nothing fraudulent about filing an ITU application, and in many cases they are a great option for those who want to secure rights in their trademark but need a little extra time to begin actually using the mark. The problem is the applicants who never intend to actually use the mark.
An ITU application requires the applicant to assert a bona fide intent to use the specific mark in commerce in relation to specific goods and services. Therefore the applicant must genuinely believe that they will actually use the mark they are registering for in relation to the goods or services they claim on the application. Applicants also owe a duty of candor in all correspondence with the Trademark Office. If an applicant breaches that duty (for example, by not actually intending to use a trademark in commerce) they are committing fraud on the Trademark Office.
So what does this mean for Beyoncé and Jay-Z? Based on the remarks made by Jay-Z, it seems as though there was no bona fide intent to use the BLUE IVY CARTER marks in relation to any of the classes of goods and services that were claimed on the application. This is corroborated by the fact that we haven’t seen the mark being used on the wide array of goods and services that were claimed (Blue Ivy playing cards, anyone?).
Trademark law provides that any registration obtained by fraud may be canceled. Therefore, if anyone opposes the BLUE IVY CARTER, SIR CARTER, or RUMI CARTER marks on the basis of fraud, there is a possibility that they could be canceled and then anyone would be free to use the marks.
It is important to be truthful in all statements made to the USPTO, and part of being truthful is having a bona fide intent to actually use the marks in commerce when filing an ITU application. It can be tempting to broadly claim a wide class of goods or services in order to get as much protection as possible for your trademark, but this could actually be detrimental to the registration of the mark. Working with an experienced trademark attorney is invaluable in determining the right classes of goods and services for your trademark and avoiding fraud on the USPTO.
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