Richard Bec, of counsel. Espinosa Martinez in Miami

Beyoncé, the mononymous pop music icon, has been involved in a trademark lawsuit that illustrates the evolving nature of dilution law in trademark litigation. In 2016, plaintiffs Beyoncé Giselle Knowles-Carter (a/k/a Beyoncé) and BGK Trademark Holdings, LLC (collectively, Beyoncé or the plaintiffs) sued a business named Feyoncé, Inc. in the Southern District of New York. Beyoncé's complaint alleges trademark infringement and dilution, unfair competition and unjust enrichment, as well as a permanent injunction against further use of the allegedly infringing mark “FEYONCÉ” on certain merchandise.

An obvious pun on the name Beyoncé, “FEYONCÉ” is a mark used by Feyoncé, Inc. in connection with merchandise it retails online for persons engaged to be married—i.e., fiancés. Examples of the allegedly infringing merchandise are featured in the complaint. They consist of mugs and clothing emblazoned with the word FEYONCÉ in bold lettering. Sometimes the products include the tag line “HE PUT A RING ON IT”—an apparent reference to Beyoncé's song “Single Ladies.”

Feyoncé, Inc. filed its trademark registration applications with the U.S. Patent and Trademark Office (USPTO) back in 2015 for the marks “FEYONCE” and “FEYONCÉ.” After it began using the marks in 2016 on clothing and other merchandise on its Etsy online shop, Feyoncé, Inc.'s trademark applications were rejected by the USPTO. Part of the reason for the denial was the proposed marks' similarities with the mark “BEYONCÉ” owned by Beyoncé since 2004 through her company BGK Trademark Holdings, LLC.

On Sept. 30, Judge Alison J. Nathan of the U.S. District Court for the Southern District of New York issued her memorandum opinion and order on Beyoncé's motion for summary judgment and memorandum of law. If the requirements of such a motion are met by the movant, a decision is made on the claims involved without holding a trial. That did not occur here. The judge denied the plaintiffs' motion because there remains a genuine dispute of material fact as to whether the relevant marks are so similar as to likely cause confusion.

As for their trademark infringement claim, the plaintiffs' motion relied on Pfizer v. Y2K Shipping & Trading, No. 00CV 5304, 2004 WL 896952, at *5 (E.D.N.Y. 2004), a case in which the court did find that there was a likelihood of confusion between two similar marks as a matter of law—i.e., that the similarity in sound and spelling between “VIAGRA” and “TRIAGRA” “is likely to lead consumers to believe that the defendants' product is affiliated with that of the plaintiff.”), Pfizer, 2004 WL 896952, at *4.

In denying the plaintiffs' motion, the court noted that the degree of similarity is the key factor in determining likelihood of confusion. The defendants did not merely change the first letter of BEYONCÉ with an F, they have created a pun because the mark sounds like “fiancé,: see Knowles-Carter v. Feyonce, No. 16-CV-2532 (AJN), 2018 U.S. Dist. LEXIS 169602, at *11-12 (S.D.N.Y. Sep. 30, 2018). Citing to Tommy Hilfiger Licensing v. Nature Labs, 221 F. Supp. 2d 410,417, the court reasoned that such a play on words could dispel consumer confusion despite facial similarity with the BEYONCÉ mark.

The court went on to analogize the Beyoncé case with Nike v. Just Did It Enterprises, 6. F.3d 1225 (7th Cir. 1993). There, the appellate court reversed the lower court's entry of summary judgment for trademark infringement. The allegedly infringing products were T-shirts and sweatshirts displaying the word “MIKE” and a “swoosh” logo identical to the one made famous by Nike. The appellate court found that there was a triable issue as to whether “any initial confusion ends with a closer look, when the observer 'gets it.”' Whether observers found the Nike/Mike pun amusing was irrelevant as to whether the pun was sufficient to dispel confusion among the consuming public.

Nathan noted that evidence in the record indicates that many purchasers of FEYONCE products are, in fact, engaged, just as many MIKE product purchasers were named Mike, see Knowles-Carter 2018 U.S. Dist. LEXIS 169602, at *14 (citing Nike, 6 F.3d at 1230). Thus, consumers appeared to be understanding the pun rather than confusing the brands.

As for the plaintiffs' claims of dilution, Nathan stated that “because the defendants' have not merely co-opted the BEYONCE mark, but rather repurposed it in a way that can be distinguished from the original, a reasonable fact-finder could also conclude that there is little risk of dilution.” Knowles-Carter 2018 U.S. Dist. LEXIS 169602, at *14 (citing Hormel Foods v. Jim Henson Productions, 73 F.3d 497, 506 (2d Cir. 1996) (noting that parody tends to increase rather than undermine the public identification of a famous mark)).

On Oct. 25, the plaintiffs sent a letter to Nathan explaining that the parties are in settlement discussions and anticipate resolving the matter shortly. This case shows that the law on infringement and dilution is evolving in the area of nonidentical marks on competing products—particularly where the allegedly infringing mark comprises a play on words that sufficiently dispels confusion.

Richard Bec is an attorney with the Miami intellectual property boutique law firm of Espinosa Martinez P.L. He focuses his practice on practice on intellectual property and commercial litigation, real estate law and bankruptcy matters. He may be reached at [email protected].