The past two years have seen an interesting series of events play out at the U.S. Patent and Trademark Office regarding trademark applications filed by major American entertainer Beyoncé Giselle Knowles-Carter. In January 2016, Beyoncé’s BGK Trademark Holdings filed its most recent application to register the standard character mark “BLUE IVY CARTER” in 14 different trademark classes, most of which covered the use of the mark on baby and infant goods. In May 2017, however, Boston, MA-based event planning firm Blue Ivy filed a notice of opposition with the Trademark Trial and Appeal Board (TTAB) to challenge the application of the “BLUE IVY CARTER” mark.
In late December, Beyoncé’s trademark holding company lost out on a motion to amend the TTAB’s standard protective order to make certain information confidential under 37 CFR § 2.120(g). This statute allows parties to make a motion when discovery is sought if they can show good cause that a TTAB order is required to protect a party from annoyance, embarrassment, oppression or undue burden. BGK Trademark Holdings sought an order modifying the TTAB’s standard protective order regarding “private information concerning Applicant [BGK Trademark],” specifically “any and all information” related to Beyoncé, daughter Blue Ivy Carter and husband Shawn Carter, aka Jay-Z.
BGK Trademark Holdings first raised its motion for entry of an alternative protective order in August 2017 in response to a notice for deposition filed by plaintiff Blue Ivy. In the motion, BGK Trademark notes that plaintiff Blue Ivy’s refusal for an alternative protective order having an expanded definition of “Confidential” information and an express term stating that terminating sanctions may be available for violations represented “an attempt to harass BGK’s principal, invade her privacy, and escape any consequences for doing so.” “The need for such vigilance is a simple, unfortunate reality today, with paparazzi literally camped outside her home, and tabloids offering top dollar to anyone knowing her location or personal information,” the motion reads.
BGK Trademark Holdings had argued that the protection of information related to those three individuals was necessary to ensure the physical safety of Beyoncé and her family, minimize the use of extensive security and “to reduce the dangerous pandemonium that so often marks Mrs. Carter’s public appearances.” Applicant BGK Trademark argued that it was only seeking to seal the logistic information regarding depositions, such as time and location, and not any of the deposition testimony itself. However, the Board found that the proposed amendments were broadly written and did not include these restrictions identified by BGK Trademark.
In denying the motion for an alternative protective order, the TTAB noted that applicant BGK Trademark had not cited to any case law which would give the Board jurisdiction over entities which are not parties to the opposition proceeding, including Shawn Carter and Blue Ivy Carter. The Board also found that the applicant’s request for the inclusion of language specifying sanctions for violating the protective order was unnecessary as the Board already had the authority to issue sanctions, such as a default judgment.
The TTAB also denied a motion to compel the attendance of Beyoncé at deposition which was filed by plaintiff Blue Ivy in September 2017. Blue Ivy had argued that such a motion was necessary as Beyoncé and her lawyers had neglected to presenting any substantive documents or interrogatory responses in objecting to Blue Ivy’s discovery requests. Blue Ivy sought the deposition of Beyoncé to obtain information related to the intent to use or actual use of the “BLUE IVY CARTER” mark in commerce, BGK Trademark’s filing of the subject application as well as BGK’s defenses in the proceeding. However, the Board found that Blue Ivy only engaged in one telephone call regarding the outstanding discovery requests and thus had not made enough of a good faith effort to compel discovery.
In the Board’s order, concerns were raised over allegations made by both parties which evidenced a lack of cooperation. “All parties in matters before the Board are expected to conduct their business with decorum and courtesy,” the order reads. The TTAB’s order also sets a schedule for the opposition proceedings which require briefs to be filed between February and March of 2019.
Part of Blue Ivy’s opposition of the mark involves an allegation that there is no bonafide intent to use the “BLUE IVY CARTER” mark in commerce and that BGK Trademark is attempting to commit fraud on the USPTO by registering a trademark which it doesn’t intend on using. Such a charge could also apply to the “SIR CARTER” and “RUMI CARTER” trademarks which BGK Trademark applied for last June.
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