San Diego Trademark Attorney® Blog

May 2012 Archives

Beyonce and Jay-Z Trademark Their Baby's Name

May 29, 2012,

concert.jpgSan Diego - While it is not surprising to see the wide variety of unique baby monikers popping up everywhere, some may see it as surprising to see that Beyonce and Jay-Z have recently trademarked their new baby's name "Blue Ivy".

On its face, one might think it seems downright crazy that someone would go to the trouble and expense of actually trying to prevent other parents from using a particular name. However, there is more to their seeming madness than meets the eye.

Though the birth of a child or a child itself would not necessarily be considered unique and original enough to necessitate trademark protection, the use of a baby's name for product branding the incentive for Trademark protection. In this case, the branding of future products is the ultimate goal Beyonce and Jay-Z had in mind. As the creators of a number of popular clothing lines and other products, both Beyonce and Jay-Z, are no strangers to the world of product branding. It is also not surprising that they would consider the birth of their first child ample inspiration for the creation of a line of clothing or other items. Born January 7th, in New York City, it is speculated that little Blue Ivy will most likely be the miniature muse for a future line of baby clothing and children's items.

So what does that mean for the average parent looking to name their child Blue Ivy or parents seeking to protect their own unique moniker? Trademarking a name obviously does not prevent other parents from using your child's name. As such, parents would only be protected from other parents trying to financially profit from the use of a registered name. For example, if you named your child Greyhound, the bus company would only have a claim if you created a rival bus company named after and based around your offspring. So those of you looking to name your baby Blue Ivy, feel free to use the name, as long as you don't plan on using the name later to start a clothing line or any other similar project for profit.

Maker's Mark Wax Seal Trademark Decision Upheld

May 11, 2012,

whiskey-in-glasses.jpgSan Diego - The trademarked red wax top of Maker's Mark Distillery's bourbon is here to stay. The U.S. Court of Appeals for the Sixth Circuit released its judgment which upheld an original ruling in a trademark infringement case between Maker's Mark and Jose Cuervo International that dates back to 2003.

The 19 page opinion made by Judge Boyce Martin states, "Distillers compete intensely on flavor, but also through branding and marketing; the history of bourbon, in particular, illustrates why strong branding and differentiation is important in the distilled spirits market." This statement goes without saying that any distinct trademark that goes into the making of a product should be considered in a products marketing. This idea paid off for Maker's Mark which spends about $22 million a year in marketing its bourbon.

Maker's Mark, created in 1953, began using the red wax dripping on its bottles in 1958 when Margie Samuels experimented with the idea using her deep fryer in Loretto, Kentucky. The signature seal was trademarked in 1985. Maker's Mark filed a lawsuit to protect its trade dress in 2003 against Jose Cuervo International who was using a similar wax seal dripping on its bottles of Reserva. Cuervo's Reserva collection began selling in the United States in 2001. However, after a judge ruled that Maker's Mark had rights to the trade dress, Cuervo changed its bottles to a "straight-edged wax seal".

When the court ruled that Cuervo was infringing on Maker's Mark trademark, the famous tequila brand not only had to change the appearance of its bottles but Cuervo's affiliates were also affected. Diageo North America and Casa Cuervo of Mexico were ordered to stop using the red wax dripping as well after Maker's Mark requested an injunction against the companies. Its injunction was granted in 2010 and therefore the liquor companies were prohibited from using the red wax seal. Diageo appealed the ruling, which the Court of Appeals has recently upheld.

In a statement made by Maker's Mark Chief Operating Officer Robert Samuels, he stated that the "outcome confirming that our unique trade dress cannot be infringed is great news for fans of Maker's Mark, those who handcraft our bourbon, and those who individually dip each bottle every day." A representative of Diageo North America simply stated that the company was "disappointed with the ruling".

Burberry Claims No Trademark Infringement Over Humphrey Bogart Image

May 7, 2012,

movie-symbol.jpgSan Diego - High fashion apparel and accessories giant, Burberry Group, is seeking a federal court ruling that says it is not committing trademark infringement by using an image of the late actor Humphrey Bogart wearing a Burberry trench coat from the classic film "Casablanca."

The luxury fashion house, founded in England, is asking the court to declare that its use of Bogart's name and image for advertising in social media does not infringe the late actor's estate's trademark rights or rights of publicity, according to the complaint. The defendant in the complaint, Bogart, LLC, owns and manages the rights to the name, voice, signature, photograph, and likeness and all other publicity rights of the iconic actor.

Burberry contends that it licensed an image of Bogart wearing the trench coat from Corbis Images, an agency that provides commercial and editorial photography and illustrations. The image, which was from the final scene of the 1942 cult classic "Casablanca," was used in a Burberry historical timeline to demonstrate the influence of the popular brand. The company also claims that the image was not used to sell its merchandise.

"Defendant is attempting to exert and assert against Burberry rights which it does not possess," according to a statement from the complaint. Burberry also cited its reference to Humphrey Bogart in the timeline is protected under the First Amendment of the United States Constitution, prohibiting the abridging of free speech.

According to the complaint, Bogart, LLC sent Burberry a cease and desist letter last month, ordering it to stop using the image. Burberry claims that Bogart, LLC followed up to the letter by contacting the British company at least two times making "a significant monetary demand."

Bogart, who died in 1957, is regarded by the American Film Institute as the greatest male star in the history of American cinema. His trademark film persona was cemented by his performance in the still-celebrated "Casablanca," making him a cultural icon among film lovers. Bogart's portrayal in the role of Rick Blaine helped "Casablanca" win the Academy Award for best picture.

The attorney for the southern California-based Bogart, LLC did not offer any comment on the dispute.