trademark

Beyoncé’s attorneys are once again asking federal regulators to register Blue Ivy Carter’s name as a trademark, more than 12 years after she and Jay-Z first sought to lock up the intellectual property rights to their daughter’s name.
In a motion filed last week at the federal trademark office, lawyers for Beyoncé’s company pushed back on a ruling earlier this year that consumers might confuse the name with another Blue Ivy: a single-store clothing boutique in Wisconsin that has used the name since before the young Carter was born.

The star’s lawyers say that ruling should be overturned, arguing that nobody is going to confuse Beyoncé and Jay-Z’s daughter — once dubbed the “most famous baby in the world” — with a small clothing shop.

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“No reasonable consumer would ever suffer any form of confusion when encountering the [store’s] logo, which is used with one small shop in Fish Creek, Wisconsin, an unincorporated community with a population of approximately 997 people,” Beyoncé’s attorneys write. “Nor would a reasonable consumer encounter the ‘Blue Ivy Carter’ mark and conclude that the famous Carter family had teamed up with a small shop in rural Wisconsin to launch a clothing line.”

An attorney for Beyoncé’s company did not immediately return a request for comment on the status of the trademark case.

Just weeks after Blue Ivy was born in January 2012, Beyoncé’s BGK Trademark Holdings LLC applied at the U.S. Patent and Trademark Office to register her unusual name as a trademark. The move raised eyebrows at the time, as fans wondered if the couple was commercializing their daughter. But Jay-Z later told Vanity Fair that they merely wanted to prevent her name from being exploited by others.

“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,” he told the magazine in 2013. “It wasn’t for us to do anything; as you see, we haven’t done anything.”

More than 12 years later, however, Blue Ivy’s parents have yet to secure that trademark registration.

For years, the process was bogged down in legal disputes with a woman named Veronica Morales, who runs a lifestyle event planning company under the name “Blue Ivy” and secured her own trademark to it. In 2020, a tribunal at the USPTO rejected Morales’ complaints, ruling that the two sides’ respective offerings were “so dissimilar that confusion is unlikely.”

That ruling seemingly cleared the way for the “Blue Ivy Carter” trademark registration to finally be issued. But attorneys for BGK never moved that application forward, and eventually, the USPTO deemed the application abandoned last year.

In November 2023, Beyoncé’s attorneys applied yet again for the same trademark registration. Like previous efforts, however, the new application quickly hit a roadblock: In April, a trademark examiner issued a tentative ruling that the mark was “confusingly similar” to the name of the Wisconsin clothing store, which has owned a trademark registration on its “Blue Ivy” logo since 2011.

(The Wisconsin boutique itself is not actually involved in the case and has not filed an opposition to the Blue Ivy Carter trademark; instead, the USPTO simply cited the earlier trademark as a reason to deny Beyoncé’s application.)

It was this tentative denial that Beyoncé’s attorneys challenged last week, arguing that Americans know who Blue Ivy Carter is and would never think she was “somehow connected to a lovely boutique shop in a small town in rural Wisconsin.”

“Since the moment she was born, she has resided in the American public’s conscience and thus … the consuming public would associate her with a trademark bearing her name,” BGK’s lawyers write. “The parties each exist and thrive in their own separate worlds and can continue doing so into the future.”

An Earth, Wind & Fire tribute act will pay the legendary R&B group $750,000 in damages for using its trademarked name in ways that a federal judge called “deceptive and misleading.”
The payment, announced in a court filing Tuesday, will effectively end a year-long lawsuit in which the band alleged that the tribute act — “Earth, Wind & Fire Legacy Reunion” – infringed the trademark rights to the famous name by suggesting it was the real thing.

Earlier this year, the federal judge overseeing the case sided with Earth, Wind & Fire, ruling that the tribute act’s conduct had been “deceptive and misleading.” A trial had been scheduled to figure out how much Legacy Reunion would need to pay, but the two sides reached an undisclosed settlement on that question last week.

In Tuesday’s filing, the judge disclosed the total that Legacy Reunion had agreed to pay –  $750,000, plus interest — a rare step following settlements, which are typically kept private. Neither side immediately returned requests for comment.

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Earth, Wind & Fire has continued to tour since founder Maurice White died in 2016, led by longtime members Philip Bailey, Ralph Johnson and White’s brother, Verdine White. The band operates under a license from an entity called Earth Wind & Fire IP, a holding company controlled by Maurice White’s sons that formally owns the rights to the name.

Last year, that company filed the current lawsuit, accusing Legacy Reunion of trying to trick consumers into thinking it was the real Earth, Wind & Fire. Though it called itself a “Reunion,” the lawsuit said the tribute band contained only a few “side musicians” who had briefly played with Earth, Wind & Fire many years ago.

“Defendants did this to benefit from the commercial magnetism and immense goodwill the public has for plaintiff’s ‘Earth, Wind & Fire’ marks and logos, thereby misleading consumers and selling more tickets at higher prices,” the group’s lawyers wrote at the time.

Tribute acts — groups that exclusively cover the music of a particular band — are legally allowed to operate, and they often adopt names that allude to the original. But they must make clear that they are only a tribute band, and they can get into legal hot water if they make it appear that they are affiliated with or endorsed by the original.

Ruling on the case last month, Judge Federico A. Moreno said the evidence pointed “overwhelmingly” in the band’s favor. In particular, the judge cited angry social media posts and emails from fans who attended the “Reunion” shows because they thought it was the original band — proof of the kind of “actual confusion” that’s crucial evidence in a trademark lawsuit.

“It is not a far cry to think that an average consumer looking for an Earth, Wind & Fire concert would believe that they could acquire that experience from either plaintiff or defendants,” the judge wrote.

Following Tuesday’s order, the only remaining issue in the case is an injuction permanently banning Legacy Reunion from infringing the name. That issue will be subject to future rulings clarifying exactly what it will cover.

Pink has filed a legal action against Pharrell Williams over his efforts to secure a trademark on the term “P.Inc” – a case that comes just weeks after Pharrell was hit with a similar branding dispute case by a longtime friend.
In an action filed Thursday at a federal tribunal, lawyers for Pink (real name Alecia Moore) claim that the trademark Pharrell is trying to register is so similar to her stage name that it’s “likely to cause confusion, mistake and/or deception” among consumers who see it.

The case was filed by Pink’s company, Lefty Paw Print, which owns numerous trademark registrations to her name, against Pharrell’s company, PW IP Holdings. Reps for Pharrell did not immediately return a request for comment.

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The new legal battle comes less than a month after Pharrell was hit with the same type of trademark action by Chad Hugo, his longtime producing partner and childhood friend. Hugo claims that Pharrell is “fraudulently” seeking sole control over the trademarks to “The Neptunes” – the name of their prolific 2000s songwriting partnership – even though they have always split the group’s assets.

At the time, Pharrell’s reps said he had been “surprised” by Hugo’s accusations, and that his “Neptunes” trademark applications had been solely designed to “make sure a third party doesn’t get a hold of the trademark.” Hugo’s lawyers rejected that explanation, calling the trademark applications “a land grab in a long simmering dispute.”

At issue in the new case is an application to register “P.Inc” as a federal trademark, which his lawyers say he intends to use for a wide range of services, including “promotional marketing services in the field of music.” A trademark registration is what allows brands to place the (R) symbol next to their name, and makes it easier to sue people who use it without permission.

The application was filed last year by PW IP Holdings LLC, Pharrell’s company that also owns such trademark registrations for his band N.E.R.D., his Miami-based Goodtime Hotel, and numerous other brand names connected to the superstar.

Pink’s attorneys did not immediately return a request for comment on the dispute.

Even before Pink filed her case on Thursday, Pharrell’s application for the “P. Inc” trademark had already drawn legal opposition from another entity that has prominently used the name “Pink” for its goods.

That would be Victoria’s Secret, which since 2002 has sold a line of PINK lingerie and apparel. The retail giant filed its own case against Pharrell’s company last month, making similar arguments that Pharrell’s trademark would be confusingly similar to its own name.

“Opposer’s use of its ‘Victoria’s Secret PINK’ and ‘PINK’ marks predates applicant’s filing date,” the company’s lawyers wrote in a March 21 filing. “Applicant’s mark is highly similar to, and is the phonetic equivalent of, opposer’s ‘PINK’ marks.”

Pharrell Williams and producer Chad Hugo – who together formed the prolific songwriting duo The Neptunes – are now battling each other in a legal dispute over the group’s name, after Hugo accused Williams of “fraudulently” seeking sole control over the trademarks.
Before Williams was a solo star, The Neptunes produced a slew of radio hits in the early 2000s, including Nelly’s “Hot in Herre,” Snoop Dogg’s “Drop It Like It’s Hot,” Gwen Stefani’s “Hollaback Girl” and Justin Timberlake’s “Rock Your Body.” The legendary duo, who have been friends since childhood, were inducted into the Songwriters Hall of Fame in 2022.

But in a legal action filed last week at a federal tribunal, attorneys for Hugo accused Pharrell and his company of attempting to unilaterally register trademarks for the Neptunes name – a move they say violates their longstanding agreement that saw the pair split everything equally.

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“Throughout their over thirty year history, [Hugo] and Williams agreed to, and in fact, have divided all assets,” wrote Hugo’s attorney Kenneth D. Freundlich, a prominent music industry litigator. “By ignoring and excluding [Hugo] from the any and all applications filed by applicant for the mark ‘The Neptunes,’ applicant has committed fraud in securing the trademarks and acted in bad faith.”

In a statement to Billboard on Monday, a rep for Pharrell said there had been no ill-intent behind the disputed trademark filings: “Pharrell is surprised by this. We have reached out on multiple occasions to share in the ownership and administration of the trademark and will continue to make that offer. The goal here was to make sure a third party doesn’t get a hold of the trademark and to guarantee Chad and Pharrell share in ownership and administration.”

Hugo’s attorney did not immediately return a request for comment on Monday.

At issue in the dispute are three separate applications to register “The Neptunes” as a trademark – one covering the use of the name on streaming music, another for music videos and other content, and a third covering live performances. They were filed in 2022 by PW IP Holdings LLC, Pharrell’s company that also owns such registrations for his band N.E.R.D., his Miami-based Goodtime Hotel, and numerous other brand names connected to the superstar.

In his legal filings last week, Hugo’s attorneys argued that Pharrell had “knowingly and intentionally” filed those applications without required input from Hugo, even though he was “fully aware” that either Hugo or their partnership entity should have been listed as a co-owner: “Nothing, either written or oral, provided Williams or [PW IP Holdings] with the unilateral authority to register the trademarks.”

Hugo’s attorneys said they’ve “repeatedly” contacted Pharrell’s team about the problem, and that the star’s lawyers had “admitted that [Hugo] is equal co-owner of the trademarks” and promised to include him — a claim that lines up with Williams’ statement on Monday.

But the case claims that sharing never actually happened, partly because Pharrell’s company has insisted on “onerous business terms” that would deprive Hugo of proper control and compensation. The petition did not specify what exactly those “onerous” terms included.

Last week’s filings targeted only with the three recent trademark applications, but Hugo’s case could potentially expand beyond them. That’s because Pharrell’s company already successfully registered The Neptunes name as a trademark for musical sound recordings, and has another pending application to register the name for clothing and other merch.

In his filing last week, Hugo’s lawyers said that the trademark registrations covering sound recordings “and possibly others” would be subject to a future legal action aimed at having them voided.

Earth, Wind & Fire has won its trademark lawsuit against a tribute act that used the legendary R&B group’s name without permission, with a federal judge ruling that the evidence pointed “overwhelmingly” in the band’s favor.
In a decision released on Monday, a Miami federal judge ruled that the tribute group infringed Earth, Wind & Fire’s intellectual property rights by calling themselves “Earth, Wind & Fire Legacy Reunion.” He called the band’s marketing “deceptive and misleading.”

In particular, the judge cited angry social media posts and emails from fans who attended the “Reunion” shows because they thought it was the original band – proof of the kind of “actual confusion” that’s crucial evidence in a trademark lawsuit.

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“It is not a far cry to think that an average consumer looking for an Earth, Wind & Fire concert would believe that they could acquire that experience from either plaintiff or defendants,” Judge Federico A. Moreno wrote.

Earth, Wind & Fire has continued to tour since founder Maurice White died in 2016, led by longtime members Philip Bailey, Ralph Johnson and White’s brother, Verdine White. The band operates under a license from an entity called Earth Wind & Fire IP, a holding company controlled by Maurice White’s sons that formally owns the rights to the name.

Last year, that company filed the current lawsuit, accusing Legacy Reunion of trying to trick consumers into thinking it was the real Earth, Wind & Fire. Though it called itself a “Reunion,” the lawsuit said the tribute band contained only a few “side musicians” who had briefly played with Earth, Wind & Fire many years ago.

“Defendants did this to benefit from the commercial magnetism and immense goodwill the public has for plaintiff’s ‘Earth, Wind & Fire’ marks and logos, thereby misleading consumers and selling more tickets at higher prices,” the group’s lawyers wrote at the time.

Tribute acts — groups that exclusively cover the music of a particular band — are legally allowed to operate, and they often adopt names that allude to the original. But they must make clear that they are only a tribute band, and they can get into legal hot water if they make it appear that they are affiliated with or endorsed by the original.

In Monday’s decision, Judge Moreno ruled that Legacy Reunion had done exactly that – particularly with its references to a “Reunion” and claims that the performers were former members of Earth, Wind & Fire. The judge said the later addition of “Alumni” and other reformulations of the name were not enough.

“While the court understands there is dispute on how prominent of a role the musicians performing in [Legacy Reunion] played in the Earth, Wind & Fire group, defendants advertisements draw a close, unmistakable association with Earth, Wind & Fire to a degree unwarranted by the historical record,” the judge wrote.

“Regardless of if defendants’ musicians were technically sidemen or members, the advertisement and marketing were still deceptive and misleading as to whether the main (or most prominently known) members of the band would be performing,” Judge Moreno wrote.

The judge cited numerous complaints from Earth, Wind & Fire fans who had allegedly been confused by Legacy Reunion’s name. In one email, a fan said the name was “misleading” because they had attended the show “in the hopes of seeing Philip Bailey, Verdine White and others from the original band.” Another email complained that the tribute band was a ‘bait and switch.’ In a Facebook post, another fan said: “If the three remaining original members are not in this tour, this is basically a rip-off!”

In technical terms, Monday’s ruling decided that Legacy Reunion had violated Earth, Wind & Fire’s trademarks, but did not decide how much they must now pay in damages. That issue will be left for a future trial, which is currently scheduled for May. In the meantime, Judge Moreno said that Legacy Reunion would be barred from doing anything that would infringe Earth, Wind & Fire’s trademarks.

Neither side’s attorneys immediately returned request for comment on Monday.