On Sunday, September 30th, U.S. District Judge Alison J. Nathan of the Southern District of New York signed a memorandum opinion and order that was officially entered the following day in a trademark case brought by pop music superstar Beyoncé Giselle Knowles-Carter against Feyonce, Inc., a developer of merchandise marketed to engaged people using the brand name Feyoncé. Although the court found no dispute that the mark “FEYONCÉ” was chosen with the intent to capitalize on the famous “BEYONCÉ” mark, Beyoncé’s motion for a permanent injunction couldn’t be granted on summary judgment because there remains a genuine dispute of material fact regarding whether a jury would find that a rational consumer would mistakenly believe an affiliation between the two brands.
In November 2015, the defendants in this case filed trademark registration applications with the U.S. Patent and Trademark Office to register the marks “FEYONCE” and “FEYONCÉ” for use in commerce on clothing and apparel. Defendants began using these marks in commerce in 2016 and in March of that year, the USPTO refused both trademark applications in part because both marks were confusingly similar to Beyoncé’s registered mark “BEYONCÉ.”
Counsel representing Beyoncé sent a cease-and-desist letter to the defendants in this case as early as February 2015 demanding that defendants stop using the “FEYONCÉ” mark, abandon their trademark applications and transfer the domain name feyonceshop.com to Beyoncé. In April 2016, after more than a year without a response to the cease-and-desist, Beyoncé filed a complaint alleging claims of federal trademark infringement, federal unfair competition, federal trademark dilution, common law unfair competition, unjust enrichment and claims under New York State law for trademark dilution and deceptive acts and practices. Beyoncé entered a motion for summary judgment on the federal trademark infringement, federal and state trademark dilution and federal and state unfair competition claims seeking a permanent injunction.
In the first prong of the test for determining federal trademark infringement, there was no dispute that Beyoncé’s mark was protectable as a matter of law. In the second prong, the court looked to whether there was undisputed evidence that confusion was likely. Although the marks were extremely similar in text, font and pronunciation, the use of the letter “F” in “FEYONCÉ” turned the mark into a play on words to sound like “fiancé,” a pun which the court found could dispel consumer confusion.
Judge Nathan analogized the issue to those decided in a 1993 Seventh Circuit case, Nike, Inc. v. “Just Did It” Enterprises. In that case, products featuring the word “MIKE” with a swoosh design which Nike alleged infringed upon its trademarks didn’t infringe as the pun in the design was sufficient to dispel confusion among consumers. “Evidence in the record indicates that many purchasers of FEYONCÉ products are, in fact, engaged, just as many MIKE product purchasers were named Mike,” Judge Nathan’s opinion reads. A rational trier of fact could still conclude that there was consumer confusion, and several Polaroid factors did weigh in favor of finding a likelihood of confusion, but that wasn’t a conclusion that the court could make as a matter of law on summary judgment.
The pun between “FEYONCÉ” and “fiancé” also helped the defendants survive the other motions for trademark dilution and unfair competition. On the dilution claim, the court cited to the Second Circuit’s 1996 decision in Hormel Foods Corp. v. Jim Henson Productions, Inc. which found that parody tends to increase rather than undermine the public identification of the public mark. Plaintiffs’ claims of unfair competition also failed at summary judgment because the likelihood of confusion between the marks couldn’t be established. Because triable issues of fact remain, Judge Nathan also denied Beyoncé’s motion for permanent injunction.
This isn’t the only interesting trademark matter which has involved Beyoncé in recent months. Beyoncé’s attempts to trademark the name of her daughter Blue Ivy have been thwarted in large part by an opposition filed by a Boston, MA-area event planning firm using the same name. The pop singer has also tried to trademark the names of her twins Rumi and Sir Carter but information on the record in the Blue Ivy case has raised the question of whether Beyoncé and her husband Jay-Z are committing fraud on the USPTO by applying for trademarks without a legitimate intent to use the marks in commerce.
Image Source: Deposit Photos.