I’ve written about name trademarks before—here’s a 2011 blog post about a company that tried to register LADY GAGA as a trademark for cosmetics and jewelry.
Well, the topic is back in the news due to a story that involves the world of the Kardashian-Jenners, so if that whole thing sets you off, feel free to stop reading now.
The KYLIE Case
OK, for those of you who are still with me, here’s the story. Back in April 2015, Kylie Jenner, one of the younger sisters (I really don’t keep close track of the whole Kardashian thing) applied to register KYLIE as a trademark with the United States Patent and Trademark Office for “Advertising services, namely, promoting the brands, goods and services of others; endorsement services, namely, promoting the goods and services of others.”
When you file a trademark application with the USPTO, it sits in some vast government inbox for about 4-6 months, at which point the application is reviewed by a USPTO Examining Attorney. If it’s approved, the application is published in the USPTO’s Official Gazette. Anyone who wants to oppose the application then has 30 days to do so, and extensions are regularly granted.
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Finally, in February 2016, the KYLIE application was opposed by KDB, a company that represents the interests of Australian pop star Kylie Minogue. I mostly know Minogue from “Where the Wild Roses Grow,” with Nick Cave & the Bad Seeds, and for her 2001 American smash hit, which, if I mentioned the name, you wouldn’t be able to get it out of your head, so I’ll spare you.
The opposition starts by highlighting Minogue’s success in the entertainment industry going back to 1979, and her charitable work (including that related to breast cancer, of which she is a survivor.) It also lists Minogue’s various trademark registrations which include the word KYLIE for entertainment services and a variety of products.
Remember—the Kylie Jenner application is for advertising and endorsement services, not for entertainment services (like live performances) or specific consumer goods.
The opposition then goes on to describe Kylie Jenner as follows:
Applicant is a corporate entity affiliated with Kylie Jenner, a 2015 home-schooled graduate of Laurel Springs School in Ojai, California…Ms. Jenner is a secondary reality television personality who appeared on the television series “Keeping Up With the Kardashians” as a supporting character, to Ms. Jenner’s half-sisters, Kim, Khloe, and Kourtney Kardashian (i.e., the Kardashians).
I love it when lawyers use court filings to throw shade.
The Kylie Minogue opposition goes on to cite three grounds on which they object to the KYLIE (Jenner) application:
1. Priority, which simply means that their trademark registrations pre-date the KYLIE (Jenner) application.
2. Likelihood of confusion:
If Applicant is permitted to register its “KYLIE” mark, confusion resulting in damage and injury to Opposer would likely occur. Persons familiar with Opposer’s Marks, and Opposer’s goods and services, would likely be confused, be mistaken, or be deceived into the belief that Applicant’s services are associated with, affiliated with, or sponsored by Opposer. Such confusion would inevitably result in damage to Opposer.
3. And, finally, dilution, which I’ve written about before. This is a claim that the defendant’s actions would diminish the goodwill embodied in the trademark, even if the defendant isn’t using the actual mark on their goods or services, and even if there’s no likelihood of confusion.
The third claim, for dilution, is intended to address the fact that the KYLIE (Jenner) application is for different goods and services.
Can a Name Be a Registered Trademark?
Briefly, yes. Not so briefly…
In the Lady Gaga blog post I cited above, I wrote:
Names, as trademarks, are generally treated as though they are descriptive unless they have “attained a secondary meaning,” which is when the public regards the term as having been identified with one seller.
The United States Patent and Trademark Office has four bars to trademark registration that might apply to personal names. The primary register of trademarks is barred to a potential trademark when:
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A mark is “primarily merely a surname.”
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An applied-for mark is the name of a living individual.
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A mark falsely suggests a connection with “persons, living or dead.”
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A mark criticizes “persons, living or dead” or brings them into contempt or disrepute.
But wait, you say, isn’t KYLIE the name of a living individual (actually, several living individuals)?
Yes, but:
A trademark may not be placed on the principal register if it is the name of a living individual, unless that individual provides express written consent. Even with consent, the proposed trademark will still be subjected to the “primarily merely a surname” analysis to determine if the name can be protected.
Since both Kylie Minogue and Kylie Jenner consented to their names being used in connection with these trademark applications, this isn’t an issue in this case.
Who Will Win?
The Kylie v. Kylie case will most likely turn on the question of dilution. Even though the goods and services are different, is Kylie Minogue—along with her KYLIE trademarks—so famous that effectively any trademark application that involves the word KYLIE should be blocked? I tend to lean in Minogue’s favor here, since she is actually very famous.
One important thing to understand here: neither Kylie Minogue nor Kylie Jenner are able to prevent anyone from using the name “Kylie,” from calling themselves that, or anything along those lines. This only relates to the ability to use KYLIE as a brand name, and to register that brand name as a trademark.
