It shouldn’t surprise you that Khaled owns the rights to the DJ KHALED trademark. He (and his affiliated companies and representatives) also own the trademarks for his catchphrase, WE THE BEST, for use in many marketplaces such as clothing, retail store services, vape juice, and entertainment. If you aren’t familiar with Khaled on social media, however, you may not know that his almost 2-year-old son, Asahd Tuck Khaled, is an Instagram famous baby with over 1.9 million followers and his own brand. Even more surprising is that DJ Khaled and ATK Entertainment Inc, a Florida Corporation, filed for federal registration of the ASAHD mark, the ASAHD TUCK KHALED mark, and the ASAHD KHALED mark for use in a plethora of marketplaces.
While filing a trademark for a name is tricky, this hasn’t stopped celebrities from trademarking the names of their children. For example, Blue Ivy Carter, the daughter of Beyonce and Jay Z, has had registrations filed for use of her name in marketplaces such as cosmetics, key chains, entertainment, books, and more.
Even though applications to register names of individuals may be submitted to the USPTO, this doesn’t mean that they are necessarily valid. Registration for the BLUE IVY CARTER mark, for example, was filed on January 22, 2016 but is still pending registration because of various oppositions filed against it. Typically, it is required that a name that is being registered must identify someone well known or famous, that it is being registered with that particular person’s consent, and that the person has achieved some sort of public recognition under the name in connection with the relevant industry, goods, or services that are being sold under the mark.
In this case, however, Khaled is not arguing that his son’s name has the right to be registered in the first place. A complaint filed by Khaled and ATK Entertainment last week in the District Court for the Southern District of New York asserts that an infringer is wrongfully utilizing the name “Asahd” in the marketplace and is hence intentionally targeting the Khaleds. Specifically, Khaled argues that registration of the defendant’s proposed marks, including ASAHD, ASAHD COUTURE, A.S.A.H.D. A SON AND HIS DAD, and WE THE BEST LIFESTYLE, is a direct infringement of Khaled (and his son’s) brand and will wrongly benefit from the exploitation and hard work Khaled has put into building his reputation.
The defendant is Curtis Bordenave and Business Moves Consulting Inc., both of which are reported to be based out of Dallas, Texas. The application for the marks in question were filed in February and appear to overlap with many of the same marketplaces that ATK and Khaled intended to utilize the ASAHD marks in, including clothing, footwear, and accessories.
After Bordenave and Business Moves Consulting applied for the marks, a Letter of Protest was filed with the USPTO, which originally stopped the examination of the process in its tracks. Letters of Protest are not often filed, but are an option given to third parties by the USPTO that allow anyone to present issues with a pending mark to an examining attorney ahead of time- before the examination process. Bordenave and Business Moves Consulting were given the opportunity to cease registration of the mark or make adjustments to the application based on the plethora of information given to them about the existence of the famous Khaled baby, but opted to move on with the registration process regardless.
On June 4, registration of the infringing mark was denied by the USPTO on various grounds, including the fact that the mark consists of a name that identifies a particular, living individual and that the individual has not given written consent to the registration of the name. The USPTO stated that “the term ASAHD appears to point to Asahd Khaled who is a well-known DJ. Therefore, goods bearing the term ASAHD will be associated with Mr. Khaled especially in the instant case where the named person is very well known for his clothing line and the recited items are all clothing items.” Additionally, the USPTO noted that registration was denied because the mark implies a false connection between Bordenave/Business Moves Consulting and the Khaleds/ATK.
While the marks have already been denied registration in the USPTO, this didn’t stop Khaled and ATK from filing a suit against Bordenave and Business Moves Consulting to ensure that there was no further infringement of Asahd Khaled’s name.
The complaint states that the suit is being brought “[t]o put a stop to Defendants’ parasitic conduct and bad-faith acts.” It asserts that the defendants have a habit of appropriating and exploiting the good faith and effort of well-known brands and personalities in order to make a profit.
Additionally, they argue that Bordenave and Business Moves Consulting have “falsely attacked” the reputation of Khaled. First and foremost, it notes the defendants’ dissemination of false and defamatory statements to media outlets in addition to defamatory posts on social media. Secondly, the complaint alleges that the defendants have launched an influx of unwanted communications that is hindering efforts to negotiate with the JORDAN brand to launch an exclusive line of children’s apparel utilizing the ASAHD mark. Specifically, the defendants attempted to file the marks for ASAHD and ASAHD COURTURE (A.S.A.H.D. COUTURE post-amendment) shortly after the announcement of the collaboration with the JORDAN brand in an effort to interfere with negotiations.
Overall, the complaint asserts several claims including violation of DJ Khaled and Asahd Kaheld’s right to publicity and defamation under New York Law, trademark infringement, and unfair competition. While Bordenave and Business Moves Consulting have registered for a plethora of marks over time, such as the CARDI B mark and the MANSPLAIN mark, this doesn’t give them a better shot at winning this case. If they have any idea of what they are getting themselves into on this case, they will drop back and settle this one out. Hopefully, in the future, Bordenave and Business movies Consulting will try to avoid registering for the rights to the name of another celebrity – no matter their age – without consent.
Author*, Caroline Womack, is a rising 3L at Quinnipiac University School of Law and primarily studies intellectual property law, focusing on video game and internet law.*