Beyoncé Poised to Settle Trademark Dispute
Pop Queen Beyoncé (whose full name is Beyoncé Giselle Knowles-Carter) and her company seem prepared to settle a trademark infringement lawsuit they brought against a Texas company selling “Feyoncé” merchandise, according to Forbes.
At the end of September, a federal judge denied Beyoncé’s motion for a permanent injunction against the Texas company.
The “Feyoncé” brand name (which sounds like “fiancé”) was intended to be marketed to those engaged to be married.
In the judge’s opinion, she noted that the “defendants chose the formation "FEYONCÉ" in order to capitalize off of the exceedingly famous BEYONCÉ mark.”
However, noted the court, that alone doesn’t establish the likelihood that consumers would confuse the Feyoncé mark with the singer’s trademark:
Rather, a critical question is whether a rational consumer would mistakenly believe FEYONCE products are sponsored by or affiliated with BEYONCE products. A rational jury might or might not conclude that the pun here is sufficient to dispel any confusion among the purchasing public.
Beyoncé owns a trademark for her name, registered in 2004. The trademark registration includes Class 25: "Clothing: namely - shirts, sweaters, blouses, jackets, slacks, hats and caps."
Products are sold on her website: shop.beyonceshop.com.
Put a Ring on It
The defendants sell clothes and other apparel with the “Feyoncé” mark and phrases from Beyoncé’s songs, such as “put a ring on it."
When the defendants tried to register the “Feyoncé” mark, the US Patent Office refused it for several reasons – including that it was confusingly similar to the Beyoncé mark.
Defendants continued to sell clothing with the mark.
Beyoncé’s lawyer sent them a cease-and-desist letter. When the defendants didn’t respond, Beyoncé and her company filed suit, asserting causes of action for:
- Federal Trademark Infringement
- Federal Unfair Competition
- Federal Trademark Dilution
- Deceptive Acts and Practices, in violation of New York Law
- Trademark Dilution, in violation of New Law
- common law unfair competition
- unjust enrichment
As the judge noted, to prove trademark infringement, a plaintiff must meet a two-part test:
- the plaintiff must show that its mark is entitled to protection; and
- the plaintiff must show that "defendant's use of the mark is likely to cause consumers confusion as to the origin or sponsorship of the defendant's goods."
The certificate of trademark registration is evidence that the mark meets the first part of the test.
Also, when a registered mark has been in continuous use for five consecutive years following the registration, the right to that mark is considered "incontestable" (with some exceptions).
Likelihood of confusion is a question of fact, focused on the probable reactions of people who might buy each party’s products.
Play on Words
The judge noted that
By replacing the "B" with an "F," Defendants have created a mark that sounds like "fiancé," i.e., a person who is engaged to be married. As a result, FEYONCE is a play on words, which could dispel consumer confusion that might otherwise arise due to its facial similarity to the BEYONCE mark.
The judge concluded that
a reasonable jury may conclude that consumers looking for BEYONCE products are unlikely to select a FEYONCE product inadvertently.