Celebrity Trademark Watch: Is It Possible to Hip Hop to the Front of the Line?

Every now and then celebrities enjoy perks that you and I can only dream about. For the world’s newest music celebrity, Blue Ivy Carter, this is doubtless true as she has recently gotten some unusual white glove service from a government agency — something we all wish we could get the next time we’re at the registry of motor vehicles. Nonetheless, the life of a celebrity is not all glamour and fancy parties. For every moment an actor or musician spends basking in the spotlight, she or he spends countless hours auditioning, rehearsing, touring, and, in the earlier days, struggling to establish a career (that is unless you happen to be a Kardashian). And once you’ve “made it,” a host of unanticipated time-intensive demands rush in to fill the void left by your now-departed anonymity — agents, managers, interviews, security, executives, acolytes, and, of course, managing your growing trademark portfolio. Let’s not forget, after all, that in Show Business the term “business” is perhaps the more operative word. Celebrities, like all other business folk, offer goods and services to their fans/customers. So, just like any goods manufacturer or service provider, a famous singer needs to protect her brand by enforcing her intellectual property rights, including obtaining federal trademark registrations. How else is a relatively new artist like the very recent six-time Grammy Award winning Adele supposed to ensure someone else doesn’t start touring under the same name? Registering your stage name as a trademark is a good first step – and no need to worry, Adele’s application is currently pending at the Patent and Trademark Office. Which is a good thing, because when you’re famous it seems people often line up to get a piece of your action, including trying to beat you in the race to the PTO’s Principal Register. If you have any doubts, just ask the Carters.

On January 7, 2012, Mr. and Mrs. Shawn C. Carter celebrated the birth of their daughter, Blue Ivy, in New York City (pics of the happy family available here). Four days later an application for the mark BLUE IVY CARTER NYC for children’s clothing was filed with the PTO. Perhaps not so coincidentally, the application claimed January 9th as the date of first use. The Carters, more commonly known in international circles as Jay-Z and Beyoncé, were just getting to know their new little bundle of joy while the ink was still drying on the application filed by a gentleman in New Jersey. And before you could say “Destiny’s Child,” another application for BLUE IVY CARTER GLORY IV was filed by a company in New York for use in connection with fragrance and beauty products.

Anyone who has ever prosecuted a trademark application with the PTO knows that it is not the fastest process in the world. Generally months go by before the examining attorney assigned to your file evaluates the application and, in the best of circumstance where no refusals are issued, it can easily take over six months or more to obtain a registration. But a mere two weeks after the first BLUE IVY-formative trademark application was filed, the PTO issued an Office Action refusing registration for, among other reasons, false connection with a famous individual, the famous individual in question being the world’s (arguably) most famous musical couple’s newborn daughter. In relative terms, this is quicker than the Maître D’ will give your table away to George Clooney if he happens into the same trendy restaurant where you thought you had reservations to celebrate your anniversary — and the PTO issued an Office Action citing false connection with a famous individual for the other BLUE IVY application about a week later.

Was this preferential treatment? Celebrities who can afford to live in the lap of luxury are accustomed to getting for free the things many people only dream of one day buying and as far as the unknown masses are concerned the only line they wait in is the one at the end of the red carpet. So does the PTO rush to serve celebrities first, too? According to recent comments given by a PTO representative to the World Trademark Review, trademarks may sometimes be reviewed outside of the normal first-come-first-served order to ensure “consistent handling of co-pending applications” and that “[f]requently current events trigger” filing trends which warrant this special consideration. Does that equal celebrity special treatment? I don’t know, but you can check with Adele and see what she thinks — her application has been pending since May of 2011. Or you can check in with the owner of BGK Trademark Holdings, LLC, which filed an application to register the mark BLUE IVY CARTER on January 26th for use in connection with a number of goods and services encompassing fifteen different goods and service classifications. An Office Action similar to the others was issued less than two weeks later, but it is my guess that BGK’s sole owner, the normally mononymous Beyoncé Giselle Knowles, might manage to overcome the refusal. We’ll have to wait and see, but perhaps not too long.

* * * * *I will be providing updates to this blog’s Celebrity Trademark Watch on a more or less monthly basis going forward. Tune in over the coming months for a look into the recently settled lawsuit that put into question whether Madonna rightfully owned the MATERIAL GIRL trademark used by her clothing line (despite having made the phrase famous over twenty-five years ago) and for a look at how some celebrities enforce their brands from the grave.

Beyonce photo courtesy of William J.

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