By: Josh H. Escovedo
Kylie Jenner has finally decided to step out from behind her older sisters and get to work on her own independent ventures. In furtherance of this desire, Ms. Jenner filed numerous federal trademark applications in April and November 2015. The applications relate to Ms. Jenner’s first name, as well as her full name. As you may know, a trademark provides its user the exclusive right to use the mark in connection with the class of goods in which the mark is registered. For example, the registration of KYLIE for fashion apparel, or handbags, would effectively preclude anyone from utilizing KYLIE in conjunction with that good without first obtaining Ms. Jenner’s permission. You can likely see why this might be a problem.
Ms. Jenner’s attorneys filed the applications in the international classes of goods that cover “All-purpose carrying bags; athletic bags; back packs; cosmetic bags; cosmetic carrying cases; duffle bags; handbags; purses and wallets; tote bags; umbrellas.” The other applications cover goods such as clothing, sleepwear, swimwear, and undergarments; jewelry; and fragrances. Although the registration for the mark KYLIE JENNER should not be too contentious, Ms. Jenner’s team of attorneys also filed two applications for the mark KYLIE for use in “Entertainment in the nature of providing information by means of a global network in the fields of entertainment and pop culture; entertainment services, namely, personal appearances by a celebrity, actress and model” and also “Providing information by means of a global computer network in the field of fashion.” The other KYLIE application covers “Advertising services, namely, promoting the brands, goods and services of other; endorsement service, namely promoting the goods and services of others.”
For those of you who may not be familiar with the trademark registration process, once a trademark application is filed, the USPTO issues a notice of publication and publishes the mark for opposition. At that point, any party who believes it may be damaged by the registration may file an opposition, or request an extension of time to do so. Enter pop star Kylie Minogue.
After the KYLIE application for advertising services was published for opposition, Ms. Minogue had her legal team file an opposition to the registration. Ms. Minogue asserts that if the USPTO registers the KYLIE mark, it will dilute her own brand by causing consumer confusion between the Kylies. The opposition also cites several other existing trademarks for the term KYLIE that cover entertainment services and music recordings, as well as several other marks owned by Ms. Minogue, including KYLIE MINOGUE DARLING, LUCKY – THE KYLIE MINOGUE MUSICAL, and KYLIE MINOGUE.
However, Ms. Minogue’s team took it a step further, arguing that the dilution of Ms. Minogue’s brand would be even worse because Ms. Jenner is a “secondary reality television personality” who has received criticism from disability rights groups and African-American Communities. As if that was not enough, the firm has even stated that Ms. Jenner was nothing more than a “supporting character” in Keeping Up with the Kardashians, and that she is known much more for her active media presence and her “photographic exhibitionism and controversial posts.”
It may not be entirely clear why the notoriety of the registrant matters so much that Ms. Minogue’s counsel would trash talk Ms. Jenner like that, but there is a good reason. With a mark like KYLIE, there is a good chance that the trademark will be considered merely descriptive by the USPTO. Trademarks that are deemed merely descriptive cannot be registered unless the mark has acquired secondary meaning. A mark acquires secondary meaning when consumers immediately associate the mark with that registrant, as opposed to anyone else. Hence the reason that Ms. Minogue’s counsel wants to establish Ms. Jenner as a lesser known celebrity.
It will be interesting to see how this dispute plays out. Although Minogue’s counsel will surely continue to make these arguments, the fact is that despite what the public perception may be of Ms. Jenner, she is well known. On the other hand, it is clear that Ms. Minogue could suffer harm from having consumers confuse the two marks because of the criticism that Ms. Jenner has faced from certain groups and communities. Unfortunately, absent a quick settlement, we will have to wait a while to find out who comes out on top of this one. TTAB proceedings tend to take quite some time. So, for now, stay tuned.