Advertising Law Blog

Trendy Trademarks

Once a name, slogan or word becomes trendy, enthusiastic entrepreneurs race to file trademark applications in the hope of cashing in on the excitement.

Once a name, slogan or word becomes trendy, enthusiastic entrepreneurs race to file trademark applications in the hope of cashing in on the excitement. We witnessed two examples of this recently. One, with the birth of Blue Ivy Carter (the daughter of singer Beyoncé and rapper Jay-Z), and one with Jeremy Lin's surprising rise to fame with the New York Knicks, which sparked "Linsanity" around the country.

In the case of Blue Ivy Carter, after her birth several people ─ presumably hoping to make money off her name ─ filed applications for trademarks that include the words BLUE IVY, including an application which has now gone abandoned for BLUE IVY CARTER NYC, and an application for BLUE IVY CARTER GLORY IV. Beyoncé's company also filed an application for BLUE IVY CARTER in several classes. This application is still pending; however, a prior registration for BLUE IVY for retail store services that registered before the birth of Blue Ivy Carter has been cited against the application in two classes. Since the owner of the BLUE IVY retail store has a legitimate federal registration that is blocking Beyoncé's pending application for BLUE IVY CARTER, the owner of the retail store may be in for a large payout if Beyoncé wants her trademark application to move forward in the trademark registration process. Since the Blue Ivy retail store has been using the mark since 2000 and has had a registration since August 2011, it has superior rights to the trademark for the services it uses the mark in connection with, as well as in connection with related goods and services. This now trendy name could end up being very lucky for the Wisconsin Blue Ivy retail store!

Another recent example is the spark of "Linsanity" around the country. Several hopeful applicants raced to file trademark applications for the LINSANITY trademark in order to cash in on the excitement. Since the rise of Linsanity, ten federal applications have been filed for the trademark, only one of which is by Jeremy Lin himself.

Famous people are likely protected from entrepreneurs trying to cash in on their names because a trademark application will be rejected if it falsely suggests a connection with a famous person, or if the mark includes the name of a living person who has not given his/her consent. However, if someone has been using a name that suddenly becomes trendy and does not have a federal trademark application before the trend, they could have a problem getting a federal trademark registration after the trend hits. This could happen in the case of an events planning company in Massachusetts that has recently filed an application for BLUE IVY, but has been using the name since 2009 (prior to Blue Ivy Carter's birth). While in the end, the events planning company may be able to obtain a federal registration in its mark, the company may be forced to spend more money trying to overcome trademark office rejections now that the mark is associated with a famous baby, than if the company had filed the application when it first began using the trademark in 2009.

In short, it is always a good idea to file a trademark application to try to obtain registration for your trademarks.