The danger in filing a trademark application without a clear intention of using it in the foreseeable future is that you may end up losing it by the time you actually plan to use it. So here's what really happened here. Beyonce's company filed for the trademark to protect her daughter's name. The trademark application was allowed but could not proceed to registration until use of the mark in commerce commenced. What this means is that, in the U.S. for a trademark to be registered, the applicant must provide evidence of selling or offering for sale of all products and services listed in the trademark application. The time to provide such evidence is limited. The applicant is allowed to make several requests to extend the time to provide evidence, each time for 6 more months, but eventually, no further requests will be granted, and the trademark application will be deemed abandoned. The common strategy to deal with this issue is to file a new trademark application that would essentially copy the first one—a short time before the last extension for the first application expires. This way, there is continuity in that the applicant always has a pending trademark application that would prevent others from trademarking identical or similar brands. The problem, however, is that while there may be an uninterrupted pendency of trademark applications, each application is treated separately. Whatever obstacles did not manifest themselves on the first application may well show up on the second, or third. The Trademarks Office is not bound by its decisions over the first application when it makes a decision on the second, or third. Which is what happened here when someone opposed Beyonce's second trademark application, while the first application went unopposed. Would be interesting to see how this matter is resolved.

The video below features Andrei Mincov's commentary of this article.



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Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.