Lebow
Administrative Trademark Judge
BGK
Trademark Holdings, LLC ("Applicant"), is a
Delaware limited liability company that is wholly owned by
singer, songwriter, and actress Beyoncé Giselle
Knowles-Carter, its sole member.[1] Applicant seeks registration
on the Principal Register of the mark BLUE IVY CARTER, the
namesake of Mrs. Carter's daughter, in standard
characters, for a variety of goods and services in fourteen
international classes including:
Fragrances, cosmetics, skin care products, namely
non-medicated skin care preparations, non-medicated skin care
creams and lotions, namely, body cream, hand cream, skin
lotion, body lotions, skin moisturizers, skin emollient, skin
cleansing creams, skin cleansing lotions, all for adults and
infants; hair care products, namely, non-medicated hair care
preparations, non-medicated hair gel, shampoo, conditioner
hair mousse, hair oils, hair pomades, hair spray, in
International Class 3;
Metal
key chains and metal key rings, in International Class 6;
DVDs, CDs, and audio and visual sound recordings featuring
musical performances; musical sound recordings; computer
application software for mobile phones, portable media
players, and handheld computers for use in downloading music,
ring tones and video games; handheld and mobile digital
electronic devices, namely, tablet PCs, cellular phones,
laptops, portable media players, handheld computers; cases
and covers for mobile phones and mobile digital electronic
devices, namely, laptops, cell phones, radio pagers, mobile
computers; downloadable web-based application software in the
nature of a mobile application downloadable to handheld and
mobile digital electronic devices for use in downloading
music, ring tones and video games; decorative magnets,
eyewear, eyeglass cases; computer bags; graduated glassware,
in International Class 9;
Baby teething rings, in International Class 10;
Baby carriages, baby strollers, in International Class 12;
Books in the field of music, motion pictures, musical
performers; photographs; posters; baby books; stickers; print
materials, namely, art prints, color prints, concert
programs, calendars, pens, post cards; gift bags; paper
flags; trading cards; paper baby bibs, in International Class
16;
Bags, namely, tote bags, beach bags, handbags, diaper bags,
baby carriers worn on the body, pouch baby carriers, luggage;
small leather goods, namely, leather cases, leather bags and
wallets, leather purses, leather billfolds, leather key
chains, leather key cases, in International Class 18;
Plastic key chains and plastic key rings; small leather
goods, namely, leather picture frames, leather key fobs, and
leather key holders; plastic flags; vinyl banners, baby
bouncers, baby changing mats, baby changing tables, high
chairs for babies, playpens for babies, in International
Class 20;
Mugs; beverage glassware; plastic water bottles sold empty;
hair accessories, namely, hair combs; baby bathtubs; drinking
cups for babies, in International Class 21;
Banners of cloth, nylon; flags, namely, cloth flags, nylon
flags; towels; baby bedding, namely, bundle bags, swaddling
blankets, crib bumpers, fitted crib sheets, crib skirts, crib
blankets; baby blankets, in International Class 24;
Hair accessories, namely, hair ties, hair scrunchies,
barrettes, hair bands, hair bows, hair clips, hair pins, hair
ribbons, ponytail holders; novelty button; hair accessories,
namely, electric hair-curlers, other than hand implements, in
International Class 26;
Playing cards, balls, namely, basketballs, baseballs,
footballs, kick balls, rubber balls, beach balls, golf balls,
hand balls, tennis balls, racquet balls, soccer balls, sport
balls; dolls, baby multiple activity toys, baby rattles, baby
swings, in International Class 28;
Product merchandising for others; online retail store
services featuring music, musical recordings, motion
pictures, clothing and clothing accessories, novelty items;
Entertainment marketing services, namely, marketing,
promotion and advertising for recording and performing
artists, in International Class 35; and
Entertainment services, namely, providing online video games,
dance events by a recording artist, multimedia production
services; Entertainment services in the nature of live
musical performances; production of motion picture films, fan
clubs, in International Class 41.[2]
Veronica
Morales ("Opposer") is the owner and founder of a
lifestyle event planning company doing business under the
name "Blue Ivy."[3] She has opposed registration of
Applicant's mark BLUE IVY CARTER on three grounds: (1)
that Applicant did not have a bona fide intention to use the
mark in commerce on or in connection with the identified
goods and services as of the filing date; (2) that the use
and registration of Applicant's proposed mark will result
in a likelihood of confusion with Opposer's previously
registered mark BLUE IVY, in standard characters, for
Event planning and management for marketing, branding,
promoting or advertising the goods and services of others;
Special event planning for business purposes; Special event
planning for commercial, promotional or advertising purposes;
Online retail store services and retail store services
featuring paintings, wedding portraits and invitations;
Personal management services for promotional, corporate and
party entertainers, in International Class 35; and
Consultation in the field of special event planning for
social entertainment purposes; Special event planning for
social entertainment purposes; Party and wedding planning and
coordination services; Party and wedding planning
consultation services; Providing information in the field of
wedding party planning; Rental of party decorations and
wedding decorations, in International Class 41;[4]
and (3) that Applicant committed fraud by knowingly
submitting a false declaration in support of its claimed bona
fide intent to use the mark in commerce with an intent to
deceive the USPTO.[5] Applicant denied the salient allegations
of the Notice of Opposition.[6] The case is fully briefed.
Opposer
bears the burden of establishing her claims by a
preponderance of the evidence. See Jansen Enters., Inc.
v. Rind, 85 U.S.P.Q.2d 1104, 1107 (TTAB 2007). Having
carefully considered the evidentiary record, the parties'
arguments and applicable authorities, as explained below, we
dismiss the Opposition.
The
record includes the pleadings, the file of the opposed
application pursuant to Trademark Rule 2.122(b)(1), 37 C.F.R.
§ 2.122(b)(1), and the following submissions by the
parties:
A.
Opposer's Notices of Reliance on
• Opposer's first set of interrogatories to
Applicant, and original and supplemental responses and
objections thereto;[7]
• Opposer's first requests for production of
documents and things to Applicant, and original and
supplemental responses and objections thereto;[8]
• Internet materials consisting of an October 14, 2013
article, titled "Jay Z Has the Room," from the
November 2013 online issue of Vanity Fair
magazine;[9]
• Official records consisting of a copy of the
application and status of abandoned Application Serial No.
85526099 for the mark BLUE IVY CARTER in the name of
Applicant;[10] and
• Official records consisting of a copy of the
registration certificate and status of Registration No.
4224833 for the mark BLUE IVY in the name of
Opposer.[11]
B.
Applicant's Notice of Reliance on
• Screenshots of Opposer's website, Facebook and
Twitter pages;[12]
• Opposer's advertising material, and a picture of
her mark;[13]
• Audio recording of a portion of a radio show interview
of Opposer;[14]
• Applicant's first set of requests for admission to
Opposer, and Opposer's responses and objections
thereto;[15]
• Applicant's first set of interrogatories to
Opposer, and Opposer's responses and objections
thereto;[16]
• Applicant's first set of requests for production
of documents to Opposer, and Opposer's responses and
objections thereto;[17]
• April 15, 2017 article from the website Essense.com
titled "Blue Ivy's Most Precious Mini Style
Moments";[18]
• Emails and letters from third parties to
Opposer;[19]
• Screenshots of Google searches of the terms "blue
ivy" and "blue ivy events";[20]and
• Registration certificate and file history for
Opposer's Registration No. 4224833 for the mark BLUE
IVY.[21]
C. Public and confidential declaration and report of
Applicant's expert witness, Bruce G.
Silverman.[22]
A.
Opposer's Brief Exhibits and Citations to the Evidence
Opposer
attached 191 pages of documents (Exhibits A - K) to her main
brief comprising duplicate copies of her discovery requests
to Applicant, Applicant's responses thereto, and her
registration certificate, which had already been made of
record through notices of reliance filed during her testimony
period. This was unnecessary and a waste of time.
See Trademark Trial And Appeal Board Manual of
Procedure (TBMP) § 704.05(b) (timely filed evidence
"need not and should not be resubmitted with a
party's brief."); ITC Entertainment Group Ltd
v. Nintendo of America Inc., 45 U.S.P.Q.2d 2021, 2022-23
(TTAB 1998) (filing duplicative submissions is a waste of
time and resources, and is a burden on the Board); Life
Zone, Inc. v. Middleman Group, Inc., 87 U.S.P.Q.2d 1953,
1955...
