Trademark

The Carters secure BLUE IVY CARTER trademark

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Jim Valvano’s inspirational speech at the 1993 ESPY Awards, where he famously stated, “Don’t give up. Don’t ever give up,” embodies the kind of determination the Carters have shown during their 12-year journey to secure the BLUE IVY CARTER trademark. Recently, the trademark filing cleared a significant hurdle and is finally heading in the right direction to be registered.   The trademark filing for the mark BLUE IVY CARTER was reviewed by a United States Patent and Trademark Office (USPTO) examining attorney who found no issues with the trademark filing. On December 31, 2024, the Carters were informed their mark was published in the Trademark Official Gazette. Once published, a 30-day period begins where any member of the public who thinks they will be harmed by the registration of a trademark may oppose it. They may file a Notice of Opposition, which starts a legal proceeding with the Trademark Trial and Appeal Board (TTAB) opposing the trademark. If no one opposes the trademark during the publication period (30-day period), the application proceeds to the next stage of the registration process. A trademark is typically registered around three months after it is published in the Trademark Official Gazette if no opposition is filed. For the Carters, the BLUE IVY CARTER mark has not been registered yet, but the process is going in the right direction. The Carters can anticipate the successful completion of the trademark registration process within the coming months. The Carters’ trademark filing experience offers one major lesson everyone can learn from. After receiving a trademark registration, trademark owners must remain vigilant to ensure that others do not infringe on their mark. Companies, especially in competitive industries, may attempt to use similar marks that could dilute or cause a likelihood of confusion for a registered trademark. In the Carters’ experience, Veronica Morales, who owns BLUE IVY as a registered trademark, initially objected to Beyoncé’s efforts to register BLUE IVY CARTER. Morales’ opposition created a roadblock for the Carters, which could have been a reason their trademark filing was rejected. Fortunately for the Carters, this did not occur, but others are not always as lucky. As the Carters’ experience revealed, trademark filers need to be cautious of the many challenges that could arise during the trademark filing process and after registration. Trademark owners should monitor their mark for potential infringers and take immediate action to enforce their rights. Monitoring is essential to maintain the value and integrity of a registered trademark, or else the mark could be abandoned. The Carters’ determination to protect the BLUE IVY CARTER mark highlights the resilience and strategic foresight needed throughout the trademark process. From navigating oppositions and ensuring vigilant protection post-registration, the trademark process demands persistence and diligence. A trademark owner needs to stay proactive, embrace challenges, and never give up. In the world of trademarks, as in life, success belongs to those who are persistent.

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If at first you don’t succeed… the Carter’s attempt to trademark BLUE IVY again

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After 12 long years of legal back-and-forth, Beyoncé and Jay-Z (‘the Carters’ – their real last name) are once again asking federal regulators to register their daughter Blue Ivy Carter’s name as a trademark. Shortly after Blue Ivy was born in January 2012, Beyoncé’s company, BGK Trademark Holdings LLC (BGK), filed an application with the United States Patent and Trademark Office USPTO (USPTO) to secure her distinctive name as a trademark. Jay-Z told Vanity Fair that the reason they filed a trademark for Blue Ivy’s name was because: “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.” In today’s world, where profiting off famous identities has become common, fortunately, the USPTO has safeguards in place to reject “opportunistic” applications. The USPTO can deny applications to register a trademark if they detect a false connection to a well-known person or institution. If the application includes someone’s actual name, they require written consent from that individual. This consent rule was recently upheld in the “TRUMP TOO SMALL” case (Vidal v. Elster), where the court held that famous names can’t be used without express permission. Even if the Carter’s never attempted to trademark their child’s name, they already had certain protection against opportunistic trademark applications trying to exploit their child’s name. Over the past 12 years, there have been two roadblocks to the Carter’s BLUE IVY trademark aspirations. First, Veronica Morales owns a lifestyle event planning business under the name ‘Blue Ivy.’ She owns BLUE IVY as a registered trademark and initially objected to Beyonce’s efforts to register BLUE IVY CARTER. However, in 2020, a USPTO tribunal shut down Morales’ complaints, deciding that the services offered by Morales and Beyoncé’s team were “so dissimilar that confusion is unlikely.” This was the ruling that the Carter family was hoping for. However, her BGK attorneys did not file a Statement of Use or a Request to Extend Time to File a Statement of Use within the time required which ultimately led to the abandonment of the application. Fast forward to November 2023, and Beyoncé’s legal team refiled the trademark application. A trademark examiner issued a rejection that the mark was “confusingly similar” to a Wisconsin clothing store’s ‘Blue Ivy’ logo, which has been registered since 2011. When an examining attorney does this, they determine whether there is a likelihood of confusion between the trademark filing for the specified goods or services and a registered trademark for related goods or services which would likely lead to consumer confusion regarding the connection between the marks. Beyonce’s attorneys challenged the rejection stating, “the consuming public would associate her with a trademark bearing her name” and “the parties each exist and thrive in their own separate worlds and can continue doing so into the future.” This matter is currently pending. However, the matter could be resolved through the use of a coexistence agreement. A coexistence agreement is a legally binding agreement between two parties that allows both to use similar or identical trademarks under certain conditions without infringing on each other’s rights. This raises an interesting question. Should high-profile public figures have a different standard when it comes to trademarks? Public figures, by the very nature of their fame, often command significant recognition and influence. There could be an argument where some people are so famous, that consumers will think of them even if they are not associated with the mark. On the other hand, for small-level shops and entrepreneurs around the country, it would be extremely difficult to get to that level of recognition. That is why in trademark law there is no special treatment. If you’re a global icon or a local business owner, the standards remain the same, you must prove that your mark is sufficiently different than preexisting trademarks and that it serves as a clear identifier for your goods or services. Whether or not the Carters ultimately secure BLUE IVY CARTER as a registered trademark, raises a fascinating debate on whether public figures should have different considerations due to their significant influence and notoriety. Regardless of the outcome, the trademark system remains rooted in its mission to protect consumers from confusion and ensure a fair playing field for all.

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Are “U” Famous Enough? Trademark Dilution at the University of Miami?

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If you’re anything like me, sports logos are burned into your brain. You see certain colors, a design, or even a single letter, and you immediately know the team. That’s how powerful sports branding can be. But have you ever wondered if those logos are actually famous outside the sports world? I thought certain sports teams and logos were common knowledge until University of Miami v. Caneup LLP. The University of Miami (Miami) has a trademark registration for their orange and green “U” symbol and the word “Canes.” Caneup, a Florida based company started in 2014 and applied to register the mark in 2021.  Miami sued for trademark infringement because they felt that CaneUp was trying to confuse people into thinking their products were associated with the school. (McCann, 2024). Miami also said, Caneup’s CEO admitted in “prior communications” that he had spent “years” working on the Caneup design with the university in mind, a point the school says shows an intentional attempt to infringe. (McCann, 2024). Due to the similarity with the phrase “Canes” and Caneup, the court stated, Caneup appearing on products “is likely to cause consumer confusion” given that the word “Canes” and “Caneup” are “predominantly made up of the word ‘Cane’ which to sports fans at least is heavily and instantly associated with the university. (McCann,2024). Caneup was held liable for trademark infringement. What’s really interesting, though, is that Miami also argued their logo was being diluted.  The court found Caneup was NOT liable for the dilution claim. Turns out, just because team’s logo is famous for sports fans, doesn’t mean it’s “famous enough” in the eyes of the law. Let’s dive in and figure out what exactly trademark dilution is, how to know if you are famous enough, and why Miami lost the trademark dilution part of the case. WHAT IS TRADEMARK DILUTION ANYWAY? A trademark is a word, symbol, or design that identifies and distinguishes the source of goods or services from others. It helps protect brand names and logos used in commerce from being copied or misused. This way consumers are not confused between products or services. Typically, courts will look at whether there is a “likelihood of confusion” between your trademark and the other mark. That is, whether the consumer would likely be confused as to who is the source of the goods or services. Trademark dilution is not just confusion; it’s about protecting the most famous brands’ distinctiveness. The brands do not want a lesser brand tarnishing their trademark. Think of it like this, trademark dilution is when a famous mark, like Barbie, loses its distinctiveness because other brands start to use a similar name, even if no one is confused about who’s who. If another brand starts to use the name Barbie for computers, toys and computers are so unrelated that consumers are unlikely to believe Barbie computers come from the toy brand. The Barbie mark would then become less special, less unique, and less recognizable over time. Trademark dilution protects marks that are so well-known, highly reputable, or famous that jurisdictions have decided they deserve protection whether their unauthorized use is likely to cause consumer confusion. There are two types of trademark dilution: WHY NO DILUTION FOR MIAMI? Take the University of Texas’ longhorn logo, for example. It’s just as iconic or possibly more iconic than Miami’s logo in college football. In a 2008 case, a federal judge in Texas ruled the logo had niche fame but not wide recognition by the American consuming public. Texas football is practically a religion in some parts of the county and commonly plays on national television. Still, it still was not enough recognition. Judge Marty Fulgueira Elfenbein, who presided over the case here, followed the same route as the University of Texas’ case. Judge Elfenbein made it clear that for a mark to claim dilution protection, it needs to be famous among the general public, not just within a niche community like sports. She felt Miami’s “U” was not similar to brands like Kodak and Buick where they are recognizable even to people who could care less about photography or cars. (McCann, 2024). And while Miami’s logo is beloved by college football fans, it doesn’t have that same level of universal fame. HOW TO TRULY KNOW WHAT “FAME” IS? So why didn’t Miami’s logo qualify as “famous enough” for dilution? The answer lies in trademark law itself. According to the Federal Trademark Dilution Act (FTDA) dilution only applies to marks that are truly famous across the general population. To establish a claim of dilution, the mark must have become famous before use of the allegedly diluting mark or trade name began. The law, as explained in Section 1125(c) of the FTDA, sets a high bar for what counts as a famous mark. To be eligible for dilution protection, a mark must be widely recognized by the general public. Factors for determining whether a mark possesses the necessary degree of recognition include: 1.     The duration, extent, and geographic reach of advertising and publicity of the mark 2.     The amount, volume, and geographic extent of sales of goods or services offered under the mark and 3.     Extent of actual recognition of the mark. See 15 U.S.C. § 1125(c)(2)(A). All the factors are based on judicial discretion. There is no exact number a brand needs to reach that will automatically give them the ultimate fame title. Courts must gather and weigh all relevant evidence. The findings will vary case to case. There are key findings that can be shown in each factor that could help their case. For the first factor, it would be helpful for brands to show the times where they had nationwide advertising in magazines, billboards, television, etc. The longer and more extensive the advertising efforts, the more likely the mark will be deemed famous. If a brand can establish that it publicized its mark through press releases, conferences, and sponsorships that could help as well. The second factor is most likely

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A Little Too Freaky

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According to the BOARDROOM, attorneys for Giannis Antetokounmpo have filed a lawsuit against Leaf Trading Cards (“Leaf”) over the use of the NBA superstar’s “Greek Freak” nickname and likeness. Prior, to the 2013 draft where he was selected 15th overall, Leaf and Antetokounmpo agreed on an intellectual property licensing agreement. The details included Antetokounmpo signing 1,000 autographs at $8 each with the option for more along with rights to include Antetokounmpo’s name, nickname, and photo in its trading cards. (Sprung, 2022). Antetokounmpo’s attorneys say it was only a one-year deal and was terminated May 2014.  Therefore, the deal was never renewed.  However, Leaf continued selling items with the Greek Freak mark and Antetokounmpo’s name, nickname, picture, and likeness after May 2014. “Antetokounmpo’s legal counsel wrote to Leaf, demanding that it cease its infringing activities and provide a full accounting of all merchandise sold that included Antetokounmpo’s registered trademarks and rights of publicity.” (Heitner, 2022). The 21-page suit, filed in U.S. District Court in New York by law firm, Pardalis & Nohavicka, alleges trademark infringement, dilution, interference with prospective economic advantage, and as well as confusing and deceiving the public that Leaf and the NBA champion were still associated. Growing up, most sports fans collected sports cards and could not wait to open a pack to find their favorite player. Surprisingly this has gone on since the 1800s. Sports cards were marketed with big businesses and were found inside packs of cigarettes, gum, and even taffy. (Huddleston, 2021).  Multiple generations have passed down their old sports cards and, in some families, could even be a tradition to do so. Due to the pandemic people started to get their card filled shoe boxes out of the attic and started to uncover cards they probably have not seen in decades. This has created a surge of nostalgia and people wanting to get back to their roots as a child by collecting cards again. In February 2021, eBay reported that sports card sales in 2020 increased on the site by 142 percent over 2019, with more than 4 million cards sold. (Beer, 2021). The Business Behind Sports Cards When a product becomes popular it always turns into a huge business. Seven of the ten biggest sports cards sales in history have taken place over the past eight months and, during that span, the record for the “most expensive card ever sold” has been shattered twice. As of March 30, the current record holder is a 1952 Topps Micky Mantle card that was purchased for $5.2 million, according to Action Network. Topps who is one of the most popular sports card companies is valued at $1.3 billion. (Schwartz, 2021). A fun activity that was done as a child now has huge money and even more potential involved. Famous people and influencers such as Steve Aoki, Quavo, Snoop Dogg, and Gary Vaynerchuk are getting in on the action. Along with physical cards, NBA sports cards are now digital. Dapper Labs created digital collectables called NBA Top Shot. These digital cards capture an NBA player’s best highlights within a blockchain-based NFT which are called moments. Each moment has a specific serial number to them so they cannot be duplicated or counterfeit unlike physical cards. People can now own and sell moments from their favorite player’s career instead of a plain card with a picture on it. On Feb. 26, 2021, more than 200,000 collectors waited in an online queue for the chance to buy one of just 10,600 new virtual packs of NBA Top Shot moments. Top Shot reportedly is valued at $2 billion, and more than $280 million has been spent on the NBA Top Shot platform since it launched online in October 2021, according to data tracker CryptoSlam. (Huddleston, 2021). Greek Freak’s Peak Accordingly, due to the increase of potential in the sports card world whether that’s physical or digital there is huge money to be made and Leaf was not going to miss out on the opportunity. In the last few years, Antetokounmpo has taken the league by storm. At only 27 years old, he has already won an NBA championship, Finals MVP, 2x NBA MVP, 5x All-Star, NBA Defensive Player of the Year, and many more accolades. Antetokounmpo has propelled himself to being a top-three player every year and one of the most marketable players in the league, with his unique length and athleticism (hence the nickname “Greek Freak”). Antetokounmpo’s Top Shot 2014 layup sold for $137k and his rookie card sold for $1.8 million in 2020. (Huddleston, 2021).  Truly, Antetokounmpo is a once-in-a-generation talent, and people are willing to pay a significant amount of money for any of his memorabilia. In order for this case to be settled, the specifics of the licenses will be vital.  “Licenses means a contract exists allowing one company (the licensee) to use the property of another (the licensor). Most commonly for cards, the licensed content includes the player’s image, the team name, uniform, professional league logo, etc.” (Baseball Card Legal Terms, 2011). If the case results in Antetokounmpo’s favor, then it is likely that the wording in the licenses is clear that it was just a one-year deal, and Leaf can no longer use his trademarked phrase “Greek Freak.” On the other hand, there could be a few reasons why this case would not result in Antetokounmpo’s favor. Typically, to protect something on the card, a patent number will be listed. Antetokounmpo did not receive registration of the “Greek Freak” trademark until February 2018. With no trademark in 2013, there could be a way for Leaf to create these cards up to that point. Therefore, with the trend of physical and digital sports cards increasing, Leaf wants to do everything in their power to be able to create as many cards as possible with Antetokounmpo’s name, image, and likeness. Citations Baseball Card Legal Terms. (2011, June 16). Retrieved from The Cardboard Connection: https://www.cardboardconnection.com/baseball-card-legal-terms Beer, T. (February, 11 2021). EBay Reports Increase Of 4 Million Trading Cards Sold In 2020. Retrieved from Forbes: https://www.forbes.com/sites/tommybeer/2021/02/11/ebay-reports-increase-of-4-million-trading-cards-sold-in-2020/?sh=7ab00f801963 Heitner,

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Taco Bell & Taco Tuesday Trademark

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Taco Tuesday is a phrase that many companies would love to trademark. LeBron James has recently made this phrase famous through his social media videos of his family enjoying tacos every Tuesday. In 2019, LeBron James was unsuccessful in registering “Taco Tuesday” as a trademark and was denied by the United States Patent and Trademark Office (USPTO). James wanted protection from liability if he used “Taco Tuesday” in certain projects, like podcasts and other media sources. Ultimately, the phrase has been trademarked since 1989. The phrase is owned by two entities, Taco John’s and Gregory’s Bar & Restaurant. Taco John’s owns the trademark in 49 states and Gregory’s Bar and Restaurant owns the trademark in New Jersey. Typically, a trademark is established on a first come first served basis, but it is possible to have two separate businesses own the same trademark. For example, when one company used a business name first, but another company registered the name before them. If the company can prove that they had the business name first, then they would be able to use the business name in their geographic market. The company would not be able to use the mark outside of their geographic market though. This is how Taco John’s and Gregory’s Bar & Restaurant own the “Taco Tuesday” trademark. Recently, Lebron James teamed up with Taco Bell to pursue the revocation of the trademark. Together the pair want to “liberate the phrase for restaurants nationwide.” James said in a statement. “‘Taco Tuesdays’ create opportunities that bring people together in so many ways, and it’s a celebration that nobody should own.” The pair even created a commercial about the revocation that aired during Game 2 of the NBA Finals. In their petition, they will have to prove that the phrase “Taco Tuesday” is a commonplace message. A commonplace message can never be a trademark because the expression merely conveys an ordinary, familiar, well recognized sentiment. In other words, the more common a term or phrase is used in everyday speech, the less likely consumers will perceive the matter as a trademark or service mark for any goods and services. On the other hand, Taco John’s and Gregory’s Bar & Restaurant will have to prove that the mark identifies their goods or services. It is how customers recognize them in the marketplace and distinguishes them from other competitors. The case is currently before the USPTO’s Trademark Trial and Appeal Board (TTAB), which can only decide if the trademark registration should remain in place. If Taco Bell is successful then any person or restaurant in the country will be allowed to offer Taco Tuesday promotions.

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Jimmy Butler….. Coffee Trademark?

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In 2020 the NBA was forced to play in a “bubble” format in Orlando where players could not leave and the rules made it very difficult to get items sent in. During this time Jimmy Butler did not enjoy the coffee options that they had so he started to make his own. He used an espresso machine that he brought for his hotel room and started to sell coffee to other players for $20 a cup (we think Starbucks prices are bad). It was a success and from that experience, he launched his own coffee brand called Bigface Brand in 2021. Butler has taken his coffee business just as serious as his play on the court. He has various pending trademark applications pertaining to the Bigface Brand and has spent thousands to do so. During yet another historic playoff run Butler has filed another trademark application for his brand, “Jimmy’s Secret Stuff.” According to the trademark application, he plans to sell coffee cups using the trademark. The timing and idea for the trademark is genius. The phrase, “Michael’s Secret Stuff” became wildly famous from the movie Space Jam starring Michael Jordan. In the movie, Michael’s Secret Stuff propelled Jordan and the Looney Tunes to a comeback victory over the Monstars. His performance on the court was so special and unique people thought there had to be something different in his drink. Even some NBA players today have gotten this phrase tattooed on them to remind them no matter what they can take their play to another level. Since the bubble, many people have compared Butler’s fiery competitiveness and stellar play in the playoffs to Michael Jordan. It has gotten so far that there is a conspiracy that Butler is Jordan’s son. This is for good reason because tonight, Butler and the Miami Heat are looking to punch their ticket to the NBA Finals as the second 8th seed to ever make the finals. (Knicks were first in a shortened season). Thus far in the playoffs, Butler has averaged 29.9 points per game, shooting 50% from the field, with a +/- of +39. With this type of play, there must be something special in his cup!

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