With billions of dollars at stake, celebrities’ lawyers have been beating down the door at a surprising government office in hopes of advancing clients’ economic interests by staking exclusivity claims on everything from dolls to dresses to perfumes. That gold rush-style boom, not in copyright requests but rather in mark applications to the U.S. Patent and Trademarks Office, (shown right) also keeps bumping against some hard realities that may make some female stars, especially, and their counsel rethink the supposed advantages of marks versus copyrights.
Although conventional wisdom among barristers may hold that marks may be the better way to build a brand because they permit legal protections for phrases that aren’t exactly unique, it may be that some names, words, sayings, and coinages are just too common or close to material that Uncle Sam already has allowed to be stamped with the signature TM.
This legal speed bump may be especially timely and pertinent for Entertainment Law practitioners to ponder in the wake of the recent decision by a federal court in Manhattan, asking if the intellectual property rights of screen legend Marilyn Monroe, for her estate, may be too generic for protection. Other celebs also have hit some TM woes worth noting.
The rush to TM
For the stars who dominate those glossy magazine covers, music hit charts, silver screens, broadcasts, and streams, making money these days is about being more than themselves. It goes beyond their exercised talent: Being a celebrity is a business in itself. And there’s big money to be made as a name, a personality that radiates beyond into a brand, especially when it markets and promotes merchandise of all kinds that can be worth billions of dollars.
Who doesn’t know Beyonce? The stunning 35-year-old entertainment powerhouse, with her equally powerful industry husband, Jay Z, has skyrocketed from being a singer, to being a mega brand. In fact, she and Jay Z are estimated to be a billion-dollar couple. Both are savvy entrepreneurs and investors, with part of her wealth-making machine rooted in talent management, and, of course, fashion—the Ivy Park line.
The couple’s kids also are potential revenue-generators. In 2012, Beyonce sought a mark for Blue Ivy, her daughter’s name. She and Jay Z said they hoped both to put a marker down on the name so others wouldn’t exploit it. They also envisioned developing an eponymous line of baby goods. But alas, as cool a handle as Blue Ivy might be, it turned out not to be celebrity distinctive: A wedding planning company had the same name, and had filed a mark application three years earlier. Beyoncé Giselle Knowles-Carter recently has refiled a TM app for “Blue Ivy Carter. ” She, by the way, not only holds marks for her name but also for meme-able phrases like Yonce and Beyhive.
She’s not the only one who has sought a mark for her kids’ names: Victoria Beckham has protected her kids’ monikers, most recently that of daughter Harper, 5.
As for Taylor Swift, it’s not little ones but pretty much everything else she has tried to mark, especially phrases from her 1989 album, including Party Like It’s 1989 and This Sick Beat. She continues to seek TMs—and she generates ample buzz just by doing so, see the latest attention she has received over potential mark protections for the appelation Swifties.
Protections not always granted
Not to be outdone, Katy Perry has sought marks for Left Shark, Right Shark, and Drunk Shark after her Super Bowl performance in 2015 spawned numerous memes. Alas, her applications didn’t hold water for a TM examiner, and she caught considerable public flak over even her attempt to snap up wide shark rights.
While the Kardashian klan never can be omitted in any discussion of celebrities and attention-grabbing conduct, including with trademarks, it’s hard not to think the Internet has lost its collective mind with the recent flurry of online pieces about minor family member Kylie Jenner and her mark “feud” with diva and brand maestra Kylie Minogue. The purported Kylie vs. Kylie name claim battle had a twist, though: The patent czars actually may not have declined Jenner’s application, and Minogue’s intervention in it may have been unneeded: Though Minogue holds an array of marks on other elements of her brand empire, Uncle Sam expressed concern not that Jenner’s attempt to TM Kylie could put her at odds with Minogue but that it might cause confusion with a clothier’s existing mark for Kylee.
With celebrities and their counsel reaching out to mark so many names, words, and phrases, how can the USPTO fulfill its mission in deciding any of these is sufficiently distinctive to merit legal protection?
It’s challenging enough for Uncle Sam to sort out marks and usages like Feyoncé but here come the courts, with a federal judge in Manhattan suggesting that the images of the legendary Marilyn Monroe have become so generic that they may not qualify for mark protection. For celebrities like “Sasha Fierce,” aka Beyonce’s alter ego, will the allure of trademarks fade as they become common. That would not be Hot.