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Feyoncé Play on words: No confusion with Beyoncé

October 17, 2018, By

A Fiancé is a man who is engaged to be married. A Fiancée is a woman who is engaged to be married. Both come from the French word ‘fiancé’ meaning to promise which ultimately has its root in the Latin verb ‘fidere’, to trust.

Feyoncé, is a made up word adopted by a recently established clothing company targeted at engaged couples.  Beyoncé is a pop music superstar.

Are you confused by all these similar sounding words? Not really? Well then you might be surprised to hear that when Feyoncé applied to the US Patent and Trade Mark office to register its mark it rejected the mark as confusingly similar to Beyoncé. Unlike in the UK Intellectual Property Office and that of the EU, the USPTO considers whether the mark applied for is confusingly similar to another mark on the register when the application is put in and can refuse to let the mark proceed to publication if it thinks it is. Not securing a trade mark is not an absolute barrier to using the name. Anyone is free to use a trade name which is not registered if it wishes to do so. Beyoncé however did not want Feyoncé to use their name and so she sent them a cease and desist letter. They did not respond. So Beyoncé then filed a complaint in New York against Feyoncé claiming trade mark infringement, unfair competition, trade mark dilution and deceptive acts and practices. Perhaps believing the matter to be clear cut on the bases of the the USPTO refusal of the mark she also asked that the court decide the matter summarily, that is without the need to hear evidence of confusion from witnesses. The Court refused the motion.

There was no doubt that Beyoncé had reputation in her brand. However the Court was not convinced that there would likely be undisputed evidence of confusion. On the contrary the Court found that where a pun was used this could have the opposite effect and dispel customer confusion. Further the record at court showed that many purchasers of Feyoncé goods were engaged couples. While the Court did not rule out that likelihood of confusion may be found once all the evidence was heard, this was not a question that could be decided without a full trial.

This is good news for Feyoncé and for all you engaged couples out there who can still get lots of fun Feyoncé merchandise online – for now at least.

Written by Margaret Briffa

 

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