When you think of KYLIE, who comes to mind – Minogue or Jenner? The U.S. Patent & Trademark Office is about to address this very question.
The story began on April Fool’s Day 2015 when Kylie Jenner, the younger sister of the Keeping up with the Kardashians reality television trio, filed two applications with the U.S. Patent & Trademark Office (“USPTO”) to obtain trademarks for . . . KYLIE. The assigned trademark Examiner at the USPTO found no potentially conflicting marks in the database, and allowed the application to go through to the publication stage. But once a mark is published, the clock begins ticking on a limited time period in which anyone can oppose the mark. Which is exactly what Kylie Minogue did. The question is, who wins?
This is hardly the first time that a major television personality has trademarked their name. Celebrities and athletes frequently attempt this, and often succeed. Trademark laws allow for protection of a proper name as long as it (a) identifies the goods or services being sold under that name – i.e., paints an association in the public as to WHAT is being sold; (b) distinguishes those goods or services from similar ones sold by others; and (c) is a source indicator – i.e., informs the consuming public WHO the source is behind the mark. And therein lies the rub. The consuming public must automatically think of a particular person when hearing the name. This is often demonstrated through evidence of secondary meaning: showing that even though the name by itself may be descriptive, the public associates it with a particular person. This bar is raised higher when dealing with a name rather than a word mark, since granting the mark will prevent anyone and everyone else from using that name in association with the particular goods and services — even if it is their own name as well.
In many cases, this isn’t a problem. There is only one prominent SARAH PALIN out there (U.S. Trademark No. 4,005,353), for example. And only one CELINE DION (U.S. Trademark No. 2,322,273). In this case, however, there are not one but two celebrities who have made extensive usage of KYLIE (which, incidentally, also happens to be the name of this blog author’s two-year-old niece). Kylie Jenner’s two applications were filed for the services of “Entertainment in the nature of providing information by means of a global computer network in the fields of entertainment and pop culture; entertainment services, namely, personal appearances by a celebrity, actress and model” and for “Advertising services, namely, promoting the brands, goods and services of others” and was published for opposition on August 25, 2015. But Minogue’s representatives were watching even before publication occurred, and filed for KYLIE in May 21, 2015 for education and entertainment services, and for KYLIE MINOGUE DARLING in July 2015. Minogue is also already the owner of registered trademarks for KYLIE for sound recordings (No. 4,348,562) and for various jewelry and entertainment-related printed matter (No. 3,131,572), both of which were granted before Jenner filed her own applications. But these were not flagged as potentially conflicting marks by the Examiner who vetted Jenner’s application. This is likely because the services listed (music, jewelry) appeared to be different services and goods from Jenner’s at first glance. And Jenner is also the owner of several registered marks for KYLIE JENNER, so she already had some proof of prior usage of KYLIE, even if in combination with another word.
Kylie Minogue filed a fairly convincing opposition to Kylie Jenner’s application. In addition to citing her trademark registrations and applications, she also argues the following:
- Minogue has been a presence in the entertainment industry since 1979 . . . well before Jenner was born, launching her famous album “KYLIE” in 1988. Many of her albums have since found extensive fame in the United States, with total worldwide record sales of over 80 million records.
- Minogue owns the website www.kylie.com, and has since 1996.
- Minogue states that Jenner is simply “a secondary reality television personality” who is a “supporting character” to her half-sisters on Keeping up with the Kardashians.
- Minogue notes that Jenner’s “photographic exhibitionism and controversial posts and drawn criticism from, g., the Disability Rights and African-American communities.”
Minogue’s arguments boil down to three main claims, or counts. First, she claims priority to KYLIE, having gained prominence with the name well before Jenner. In fact, Jenner’s mark was filed as an “intent-to-use” mark, meaning that Jenner has not yet laid claim to actual use of the mark. Second, she claims there is a likelihood of confusion in that the public may confuse Jenner and her goods and services, for Minogue and her own goods and services. Third, she claims dilution – that association with Jenner and her marks will both blur and tarnish Minogue’s own registered marks and reputation.
Which Kylie prevails? Generation X may well believe Minogue is more distinctively associated with the name; Generation Y may well vote Team Jenner. Jenner has until April 2016 to respond to Minogue’s opposition. She will probably argue that she is more prominent in the particular set of services she lays claim to, and that Minogue’s own trademarking of KYLIE is an admission that the name itself is trademark-able (i.e., people in glass houses . . . ). Jenner will also point out that she beat Minogue to the USPTO in terms of filing the stand-alone KYLIE for broader entertainment-based services. This may be Jenner’s strongest point – Minogue could have filed for a broader KYLIE mark years ago. Has she waited too long? By contrast, however, Minogue was indubitably in the field and famous well before Jenner, she filed for KYLIE first, albeit in more limited fashion, and she has arguably since expanded and gained significant recognition in the fields in which Jenner now seeks to register the name. Her website www.kylie.com is also significantly broad in scope, dealing not only in music but bedding products, fashion, and other areas.
Key questions: is the music/humanitarian entertainment industry really that separate from the television/social media entertainment industry? Or do people lump both Jenner and Minogue together as general “celebrities” generally, such that people would be confused when seeing KYLIE in the entertainment industry, as to which person it refers to? Do they have the same audience of fans? Does her status as a reality television star who started off as simply lucky to be born into the right (publicity-seeking) family, hurt Jenner’s case? Is her association with KYLIE distinctive enough to overcome Minogue’s long history? In the end, it may come down to what the individuals assigned to the opposition at the Trademark Trial and Appeal Board think. But chances are, the Board is composed more of Generation Xers, than those from Generation Y.