In 2012, Veronica Morales registered the trademark BLUE IVY for Blue Ivy, her event planning company. Four years later, BGK Trademark Holdings, LLC—a company owned by Beyoncé Knowles-Carter—attempted to register the mark BLUE IVY CARTER, named after Beyoncé's daughter. Morales opposed the application at the TTAB, claiming that BGK did not intend to use the mark in commerce, and also that there would be a likelihood of confusion between the two marks. But the TTAB held that Morales failed to prove her claims and dismissed them.
Morales's principal argument supporting her assertion that BGK had no bona fide intent to use the BLUE IVY CARTER mark was that BGK had failed to cooperate in discovery, neither disclosing any substantive information in its interrogatory responses nor producing any of the documents Morales had requested. In response, BGK blamed Morales, saying that she had weaponized the discovery process to "pry into" Beyoncé's personal life and "threaten and intimidate her." While the TTAB faulted both parties—saying they "paint[ed] an incomplete picture"— it ultimately rejected Morales's argument, concluding that she had not shown that she had pursued the discovery she claimed to have been denied. The TTAB noted, for example, that while Morales had filed a motion to compel, her motion was denied because she failed to make a good faith effort to resolve the parties' discovery dispute. Similarly, the TTAB found that although Morales could have filed another motion to compel (after making the required good faith effort), she never did. And in the absence of a second motion, the TTAB concluded, it would not draw any adverse inferences against BGK.
Morales also argued that the absence of bona fide intent was apparent from BGK's "pattern of abandonment and extended non-use." Specifically, Morales said, BGK had abandoned a prior application for the same mark, and during a period of over four years it had never filed a statement of use. In rejecting that argument, however, the TTAB distinguished the case on which Morales relied, holding that the applicant in that case had filed 16 applications and demonstrated "a history and pattern of bad faith." Here, the TTAB said, one abandoned application did not show the same "pattern of bad faith conduct."
Morales's final argument regarding lack of bona fide intent was based on an interview of Beyoncé's husband, Jay-Z, that appeared in Vanity Fair magazine. In the interview, Jay-Z said that he and Beyoncé applied to register Blue Ivy's name as a trademark not because they wanted to do anything with it, but to prevent others from benefitting from the name. Morales argued that Jay-Z's statements showed BGK's "true intent." In response, BGK said there were two reasons why the statements did not support Morales's argument; first, they were inadmissible hearsay; and second, as Jay-Z's statements, they could not establish BGK's intent.
The TTAB agreed with BGK. First, it found that Jay-Z's statements were hearsay and fit within no hearsay exception. Indeed, the TTAB found that because the statements were made to a reporter, and the reporter then included the statements in the article written for Vanity Fair, they were "hearsay within hearsay (multiple hearsay)" and "particularly unreliable." Second, the TTAB agreed with BGK that because Jay-Z was neither a party nor "legally connected" to BGK, his statements were irrelevant in establishing BGK's intent.
The TTAB then turned to the question of likelihood of confusion. As is typical in this context, the TTAB went through the factors set out in the main case on the issue—the 1973 decision of the Court of Customs & Patent Appeals in In re E. I. DuPont de Nemours & Co.
In considering the first DuPont factor—how similar the marks themselves are—the TTAB noted that both marks start with the same two words—Blue Ivy—which appear in the same order and are pronounced the same. Further, the TTAB rejected BGK's attempts to differentiate the two marks—including its assertion that the inclusion of "CARTER" in BGK's mark made it look and sound different than Morales's mark, as well as its assertion that BLUE IVY CARTER represented their daughter—a human being—while BLUE IVY's mark was used in connection with a business. Moreover, the TTAB found that famous people often go by only their first name (citing Beyoncé herself as an example), so BLUE IVY (without CARTER) could also be taken as the name of Beyoncé's daughter. In the end, therefore, the TTAB found that the two marks were more similar than not. Thus, this factor weighed in favor of finding a likelihood of confusion.
However, both the second and third DuPont factors—the second being the similarity in the parties' goods and services, and the third being the similarity of trade channels—went the other way. In assessing the second factor, the TTAB found that the only services that appeared even marginally related between the two marks were those relating to marketing and branding services. It concluded, though, that because Morales's services were for general event planning and marketing, while BGK's services were for product and entertainment marketing, even these services were not related in a way that would confuse consumers. And in assessing the third factor, the TTAB said that Morales had "failed to present any evidence" showing that the parties' goods and services were "provided in the same trade channels or to the same classes of purchasers." Thus, the TTAB found, the second and third DuPont factors "weigh[ed] heavily against a finding of likelihood of confusion."
After considering one other DuPont factor—the fifth, relating to the strength of the opposer's mark, which the TTAB found to be neutral—the TTAB balanced the factors it had considered. As noted, the first factor weighed in favor of finding in a likelihood of confusion, but the second and third factors weighed strongly against that finding. Based on all the evidence and arguments, the TTAB said, it found that the parties' goods and services, as well as their trade channels, were "so dissimilar that confusion is unlikely," even recognizing the similarity of the marks themselves, including how they appear and sound. Thus, the TTAB found that there was no likelihood of confusion between the marks.
The TTAB easily disposed of Morales's final argument—that BGK committed fraud when it declared its bona fide intent to use its mark in connection with the goods and services it identified. Once it found that Morales had failed to prove BGK's lack of bona fide intent, the TTAB concluded, Morales's fraud argument fell as well.
Having rejected all of Morales's arguments, the TTAB dismissed her opposition.
The case is Veronica Morales d/b/a Blue Ivy v. BGK Trademark Holdings, LLC, Opposition No. 91234467 (TTAB June 30, 2020) (not precedential).
Originally published August 20, 2020.
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