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Is A Trademark Application An Appropriate Gift At A Baby Shower?

Posted in Patent Law, Trademark Law

It only took four days, but four days was enough time for New York City fashion designer Joseph Mbeh to file an application with the United States Patent and Trademark Office seeking to register a trademark for “Blue Ivy Carter NYC.” Not coincidentally, “Blue Ivy” is the name chosen by Beyoncé and Jay-Z for the daughter born to them on January 9, 2012. The application is still pending before the United States Patent and Trademark Office, and alleges that Mbeh first used this mark “at least as early as January 9, 2012.”

Similarly, as you may recall, it was nearly a year ago when Governor Sarah Palin filed a trademark application seeking registration of her own name. Although Ms. Palin’s application was the topic of many jokes on late night television programming, as will undoubtedly be the case regarding the “Blue Ivy” mark as well, you may be surprised to learn that the Trademark Act of 1946 contains specific provisions allowing a person to obtain a trademark covering their name. Chapter 1300 of the Trademark Manual of Examining Procedure (“TMEP”) defines the criteria which, if met, permit a person to successfully obtain a trademark covering their name. Not unlike other trademark applications, the application must cover a mark which identifies the goods or services associated with that mark, and must function as an indication as to the source of those goods or services while distinguishing them from others. As a result, any person may seek registration of their name, provided they can demonstrate that their name is so distinctive that the public immediately thinks of them when the name is heard. 

A name can accomplish the requisite distinctive qualities in two primary ways: 1) by being an extremely unusual name (unfortunately Plamondon is probably not an unusual enough name, however, a name like “Beezow Doo-Doo Zopittybop-Bop-Bop (the name of a man arrested last week in Madison, Wisconsin) likely will suffice); or 2) by continuously using your name in commerce so that it acquires “secondary meaning.”

Because changing your name to Beezow Doo-Doo Zopittybop-Bop-Bop is impractical for most of us, those with less unusual monikers must use their name in commerce until the mere mention of their name causes a person to immediately identify that name with them. While this condition likely already exists for people like Sarah Palin who seek registration of their name, it may be much more difficult for the “John Jones” and “Steve Smiths” of the world.

Blue Ivy is probably a sufficiently distinct name capable of supporting a trademark registration. Beyond its distinctive qualities as a name, the fact that Blue Ivy’s parents are (apparently) superstars makes it seem likely that Ms. Blue Ivy could successfully prosecute an application for trademark registration of her name (assuming she was old enough to sign the application). In the event, however, there proves to be myriad individuals whose parents have blessed them with the name “Blue Ivy,” causing the name to lose the required level of distinctiveness to satisfy the Patent and Trademark Office, Ms. Blue Ivy may also be successful in trademarking her name if she follows in the footsteps of her famous parents, such that her name acquires the requisite distinctive qualities by becoming synonymous with her person. In the meantime, we can add this to the list of questions for expecting parents to ponder when selecting a name of their new bundle of joy.