Trevor Little

This past week, the eTrademarks list serv hosted by Carl Oppedahl has been abuzz with debate over the speed at which trademark applications related to Jay-Z and Beyonce’s newborn baby have been processed – with one receiving a fully researched office action just a week after it was filed.

An application for the BLUE IVY CARTER mark was filed at the USPTO on January 26 2012, with new parents Beyoncé and Jay-Z looking to protect their baby’s name. Yet they weren’t the first to make such a move. In one instance, the name (BLUE IVY CARTER NY) was also applied for by an unlicensed third party just days after reports of the birth first made media headlines. The latter application was refused, and then expressly abandoned on January 25.

The applicant behind the Blue Ivy Carter NY application has subsequently stated that his company had intended to pitch Jay-Z and Beyonce a range of branded children’s clothing “in hopes that a business relationship could be formed to create Blue Ivy Carter NYC for them”.

Attempts to file trademarks linked to topical events are not new. However, it was the speedy USPTO response to the filings that created a stir amongst trademark counsel, with commentators questioning why the celebrity parents had benefitted from speedier than usual service.

FSB FisherBroyles’ Kevin Grierson asked: “Do we have so many extra examiners that they can afford to scan the headlines for ‘juicy’ application issues and move those to the front of the pile?  If so, why is it still taking more than three months for the office to act on applications filed by us regular schmucks who aren't seeking to copycat the names of the famous? The application for BLUE IVY CARTER NYC received a fully researched office action just a week after it was filed.”

When approached by WTR, Cynthia Lynch, administrator for trademark policy and procedure at the USPTO, explained: “In general, trademark applications are randomly assigned to examining attorneys and examined in the order the applications were received by the USPTO. Occasionally, applications may be specially assigned and examined out of the usual order for reasons including ensuring consistent handling of co-pending applications from the same owner or of particular types of marks or applications.”

In this regard, while the office does not have examiners scanning headlines for high profile applications, Lynch said that headline-grabbing events can themselves cause a spike in filings, which are then best examined in this way: “Although USPTO policy prevents us from commenting on particular cases, the agency does sometimes identify potential or actual application filing trends for marks with similar examination issues, and consolidates their examination for purposes of efficiency and consistency. Frequently, current events trigger such filing trends.”

As one of the ‘current events’ causing a spike, the parents of Blue Ivy Carter have managed to protect their daughter's name and fight off two related trademark applications. As Christopher M Wheeler, of the Law Offices of Christopher M Wheeler, concludes: “At least, Jay-Z is finally down to 96 problems.”

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