Feyoncé All on His Mugs Like Possible Trademark Infringement

Feyoncé All on His Mugs Like Possible Trademark Infringement

Queen Bey is coming for the makers of the mugs and shirts you just gave to your recently engaged friends. In 2016, Andre Maurice and Leana Lopez started selling products with “FEYONCÉ” on them, combining Beyoncé’s name, the lyrics from her famous song “Single Ladies,” and the word for an engaged person.^[1]. In 2015, they unsuccessfully attempted to register the “FEYONCÉ” and “FEYONCE” marks with the United States Patent and Trademark Office (“USPTO”), which determined these “were confusingly similar to the registered mark BEYONCÉ.”^[2] Nonetheless, they used the marks on their products, leading Beyoncé to sue them for federal trademark infringement — among other claims — on April 5, 2016 in the Southern District of New York.^[3]

To no one’s surprise, Beyoncé’s name is a trademark which was registered with the USPTO in 2004.^[4] A trademark is “any word, name, symbol, or device, or any combination thereof, adopted and used to identify goods and to distinguish them from others.”^[5] Generally, the purpose of trademarks is “is to prevent unfair competition by applying a test of consumer confusion and providing rights and remedies to the owner of the trademark.”^[6] Moreover, trademark infringement “involves the unauthorized use of a mark. . . that is sufficiently similar to a registered trademark that it is likely to cause confusion as to the source of goods or services bearing the trademark.”^[7] Beyoncé and her legal team obviously determined that the Feyoncé shop was creating enough confusion to warrant a trademark infringement lawsuit.

On November 3, 2017, Beyoncé filed a motion for summary judgment against Maurice and Lopez for “federal trademark infringement, federal and New York unfair competition, and federal and New York trademark dilution, and for the entry of a permanent injunction” against them.^[8] In order for a court to grant summary judgment, there must be “‘no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law’” — meaning that the court would find that no reasonable juror could find against the party filing summary judgment.^[9]

On September 30, 2018, Judge Nathan denied Beyoncé’s motion for summary judgment, citing questions of fact on all claims that should go to the jury.^[10] To prove federal trademark infringement, the plaintiff must show that the trademark is entitled to protection and that “‘defendant’s use of the mark is likely to cause consumer confusion as to the origin or sponsorship of the defendant’s goods.’”^[11] Beyoncé’s mark is entitled to protection because it is registered with the USPTO.^[12] However, while the judge found that Beyoncé and Feyoncé are “extremely similar in text, font, and pronunciation,” the use of F instead of B makes it sound like “fiancé” — an engaged person — which “could dispel consumer confusion that might otherwise arise due to its facial similarity to the BEYONCÉ mark.”^[13]

Judge Nathan compared this case to two other cases; one in which a court found there was likelihood of confusion between Viagra and Triagra, and another in which the court did not find a likelihood of confusion when someone put Mike on shirts in the same font as Nike featuring the Nike swoosh underneath it.^[14] This case is different from the Viagra case because changing the V to a Tr didn’t create a new word that was recognized by others as not being associated with Viagra and, therefore, was likely to cause confusion.^[15] However, in the Nike case — changing N to M — created another word entirely; the name Mike.^[16] Consumers could dispel confusion by taking a closer look to understand the pun, whereas this was not possible in the Viagra case.^[17] Judge Nathan pointed out that the Nike case is similar to the present case in that changing the B to an F creates a word that sounds like fiancé, and it is possible that consumers would understand this was a pun; therefore, she could not determine as a matter of law that there is likelihood of confusion.^[18] Thus, the question of whether it does in fact create consumer confusion should go to the jury.^[19]

Judge Nathan also found a question of material fact in the unfair competition charge which that hinges on whether a reasonable juror finds  that there was likelihood of confusion.^[20] Additionally, on the federal trademark and New York trademark dilution claims, Judge Nathan found that it was possible for a reasonable juror to find that there was little likelihood of dilution.^[21] Judge Nathan concluded that she could not issue the permanent injunction because Ms. Knowles did not succeed on the merits due to issues of material fact.^[22]

On October 31, 2018, both Beyoncé and the defendants, Maurice and Lopez, requested that Judge Nathan cancel the status conference scheduled for November 1, 2018 so they could move forward with settlement negotiations.^[23]

If for whatever reason these settlement negotiations do not materialize, and the questions go to a jury, what would be the implications for Beyoncé and other celebrities whose names could be made into puns if a jury decided that Feyoncé does not constitute trademark infringement or dilution?

Some argue that if Beyoncé, or an artist in a similar case, wins and the jury decides there is trademark infringement, then businesses will be forced to be more creative in order to avoid trademark infringement.^[24] It would probably have fewer negative effects on brands in the long-term, as small companies would begin to realize that they could not play on trademarks unless there was a more substantial change than the one in this case.^[25]

However, if Beyoncé or an artist were to lose a case like this, it could affect their brands in the long-term.^[26] While trademark lawsuits can be detrimental for companies that initiate them in the short-term, it can be beneficial in the long-term because it removes potential consumer mistrust and, subsequently, loss of revenues.^[27] In this case, Beyoncé, like Cher and Prince, is a one named artist. Thus, her name is her brand, and while people might be able to distinguish the pun, it can still generate confusion as to whether she endorsed it or not, especially because Feyoncé evokes not only her name, but her famous song.^[28] Even if people understand that it is a pun that Beyoncé is not endorsing, consumers might be more inclined to buy things from the Feyoncé shop due to its similarity to Beyoncé’s brand and lower prices.^[29] Therefore, if this were to go to trial and Beyoncé were to lose, her and other brands might suffer in the long-term as it would signal to smaller companies  —  like Etsy shops — that despite using the same font and evoking imagery from a brand that took years to build, as long as the trademark is turned into an understandable pun or changed just enough that it becomes a different word, you can avoid trademark infringement and make a profit.^[30]