In 2012, BGK Trademark Holdings, LLC applied for registration of the trademark BLUE IVY CARTER with the consent of Blue Ivy, daughter of Beyoncé Giselle Knowles-Carter and Shawn Corey Carter (Jay-Z), but was met with opposition from the owner of the mark BLUE IVY for event planning. In dismissing the opposition, the Trademark Trial and Appeals Board (TTAB) rejected the Opposer’s claims of likelihood of confusion, lack of bona fide intent to use the mark in commerce, and fraud. Morales v. BGK Trademark Holdings LLC, Opposition No. 91234467 (T.T.A.B. 2020).

BGK Trademark Holdings, owned by Beyoncé—actress, singer, and songwriter—applied for the mark BLUE IVY CARTER for a variety of goods and services, such as fragrances, cosmetics, key chains, audio and visual sound recordings, banners, hair accessories, product merchandising, entertainment services, and more. Veronica Morales, owner of the lifestyle event planning company “Blue Ivy,” filed an opposition asserting, in part, likelihood of confusion with her BLUE IVY mark, which she has used for event planning services since 2009 and registered in 2012.

The Lanham Act prohibits the registration of a mark that (1) resembles an already registered mark previously used by another and (2) that when used in connection with the goods of the applicant, is likely to cause confusion, mistake, or deception. To succeed, Morales needed to show that use of the BLUE IVY CARTER mark by BGK would cause confusion as to the source or sponsorship of the goods and services.

The TTAB found there was no evidence suggesting the marks were related in such a way as to give rise to confusion. Considering the oft-cited DuPont factors, the TTAB found the second and third factors—the similarities between the goods, services, and the similarity of trade channels—weighed heavily against a finding of confusion. Morales’s mark is registered for “event planning and management for marketing, branding, promoting or advertising the goods and services of others.” BGK’s proposed mark is directed to many different goods and services, with the most similar being “product merchandising for others” and “entertainment marketing services, namely, marketing, promotion and advertising for recording and performing artists.” The TTAB found that although these services were similar, there was no evidence they were related in a manner that would cause confusion. Additionally, the TTAB found no evidence the goods and services travelled in the same channels of trade, specifically stating that online marketing does not establish similar trade channels and does not prove a likelihood that consumers would confuse similar marks. With respect to the strength of the mark, the fifth DuPont factor, the TTAB found this factor neutral because while BLUE IVY is conceptually strong, there was not enough evidence to determine commercial strength. Therefore, although the marks were similar in connotation and impression under the first DuPont factor, the other factors tipped the scales in favor of finding no likelihood of confusion between the marks.

Morales also challenged applicant’s bona fide intent to use the mark in commerce as of the filing date of the application. Trying to convince the Board there was a lack of bona fide intent, she argued BGK failed to produce documentation supporting a bona fide intent despite requests to produce documents in discovery. The TTAB was not persuaded because Morales had failed to pursue a motion to compel when BGK objected to the requests for production. Next, relying on BGK’s abandonment of an earlier trademark application for the same mark in which the company failed to file a Statement of Use, Morales argued BGK’s current application suffered from a lack of bona fide intent to use the proposed mark. The TTAB, however, determined that a prior abandoned application is not, by itself, enough to support a finding of bad faith conduct. Finally, Morales relied on statements made by Jay-Z in in a Vanity Fair magazine article where he stated that they sought a trademark for Blue Ivy’s name for a line of baby clothes “merely so no one else could,” to show lack of bona fide intent to use the mark in commerce. Rejecting that argument, the TTAB determined those statements could not be used to show lack of bona fide intent because Jay-Z is not legally connected to BGK and the statements in the article were not direct quotes. Finding no lack of bona fide intent, the Board likewise rejected Morales’ fraud arguments.

As a result, there was no bar to Beyonce and BGK securing trademark registration for their BLUE IVY CARTER mark.