The use of “Kylie” as a trademark: Kylie Minogue V Kylie Jenner

The use of “Kylie” as a trademark: Kylie Minogue V Kylie Jenner

On August 26, 2016, Posted by , In Trademark Infringement,Trademarks, With No Comments

The use of “Kylie” as a trademark: Kylie Minogue V Kylie Jenner

When news broke that Kylie Minogue began opposition proceedings against Kylie Jenner’s application to trademark the name “Kylie”, it highlighted the importance of being vigilant about trademark protection.

During April and November 2015 Kylie Jenner through her company Kylie Jenner Inc. filed numerous federal trademark applications with the United States Patent and Trademark Office (USPTO). Kylie Jenner’s trademark applications were connected with both her first name and her full name.

Kylie Jenner’s trademark applications were connected with both her first name and her full name.

A trademark must serve as an identifier. This means that consumers and the general public need to be able to recognise a trademark as a brand and associate it with relevant goods and/or services.

Kylie Jenner Trademark

Image sourced from Wikipedia Commons

The opposition process in the United States

A number of requirements need to be met before a trademark is registered with the USPTO.

One of these is that the mark has to be published in the “Official Gazette” indicating that opposition can be lodged. This publication occurs once the USPTO has issued its approval of the trademark.

Once this has been published, “any party who believes it may be damaged by registration of the mark has 30 days from the publication date to file either an opposition to registration or a request to extend the time to oppose”.

In the Kylie Jenner case, this is where complications set in.

Kylie Minogue, through her company KDB Pty Ltd (KDB) filed a Notice of Opposition on February 22, 2016 that opposed all of Kylie Jenner’s claims in class 35. KDB cited numerous existing trademarks in the name of KDB that became the basis for the trademark opposition.

Kylie Minogue V Kylie Jenner Trademark

Image sourced from Wikipedia Commons

These trademarks included KYLIE MINOGUE DARLING, KYLIE, and LUCKY – THE KYLIE MINOGUE MUSICAL.

The opposition notice also stated that Kylie Jenner’s registration of the mark “Kylie” would bring the KDB marks into disrepute, cause dissolution, cause damage and result in the likelihood of confusion with consumers.

In the United States of America, KDB has a trademark registration for KYLIE in class 41. This includes “education and entertainment”.

KDB does not have a trademark registration in class 35, where Kylie Jenner wants to register the trademark “Kylie”. Class 35 of the Kylie Jenner application for “KYLIE” is for advertising services and if allowed will give the trademark owner exclusive rights to promote goods and services of others using the name “Kylie”.

Simply put, class 35 of the Kylie Jenner application would allow for endorsement rights to use celebrity and fame to promote and advertise other brands, resulting in sales and increased brand awareness.

KDB has since opposed further applications filed for the KYLIE mark by Kylie Jenner, including an application in class 41 claiming entertainment services, being the same services KDB has included in earlier Kylie registrations.

KDB opposed the ‘Kylie’ trademark applications on the grounds it would have the potential to harm Kylie Minogue’s brand and confuse fans of Kylie Minogue.

They also stated that many of Kylie Minogue’s fan know her as “Kylie”, that her website is http://kylie.com and her 1988 debut album was “Kylie”.

While trademark law in the United States of America usually favours the rights of the first owner of a trademark in use, the USPTO also requires that to dispute the registration of a trademark a party must prove that:

  • It owns a valid trademark,
  • That their rights to the trademark are superior, and
  • That any infringements or potential infringements are likely to confuse consumers about the source of that trademark’s sponsorship.

The USPTO will need to make a determination based not only on the past use of the mark, but on future products released by Kylie Jenner and Kylie Minogue and whether consumers are likely to be confused if the trademark is registered.

The proceedings in the various oppositions are still going.

The Kylie trademark status in Australia

The Kylie Minogue V Kylie Jenner trademark dispute has also spread to Australia it seems.

In September 2015, Kylie Jenner filed for the word KYLIE in classes 35 and 41 in Australia for advertising services and entertainment services.

She also filed for the name “Kendall & Kylie” in classes 35 and 41 (in a joint application with her sister’s company, Kendall Jenner, Inc).

In February 2016, Kylie Jenner also filed for “Kylie Cosmetics” in classes 3 and 35. The Australian trademark applications remain under examination with the trademarks office.

We can speculate that the Trademarks Office – IP Australia has issued reports citing earlier KYLIE marks (likely those held by KDB) as conflicting marks to have to overcome.

In the event Kylie Jenner’s company overcomes these reports, the marks will then be advertised as accepted (as they were in the USA), marking the beginning of a two month period for other parties – such as KDB to file formal opposition.

What can be learned from the Kylie Minogue V Kylie Jenner trademark opposition case?

It shows the importance of being aware as an owner of a registered trademark. When you own a trademark it is wise to keep track of any new applications for a similar or the same trademark.

It is certainly easier to oppose a pending trademark application than it is to remove a registered trademark.

A key issue in the Kylie Minogue V Kylie Jenner trademark opposition case is who has the better rights to the name “KYLIE” as a stand-alone mark.

Some may assume it is KDB given the longer use and older registrations, however, the relevant goods/services must be considered in a trademark opposition. A registered trademark gives the trademark owner exclusive rights to commercially use the mark to brand services and goods in the class claimed.

This is why a registered trademark is a valuable asset.

The Kylie Minogue V Kylie Jenner trademark opposition case illustrates the need to protect your brand as soon as possible.

It is important to make a trademark application that covers your existing goods and services as well as any future goods and services that you intend to ‘brand’ with your trademark.

The “KYLIE” trademark opposition case also highlights the need to ensure you are consistently using the trademark you have registered. Failing to do so can expose your trademark to a removal application.

It can also reduce your capacity to demonstrate that confusion would result from a competing brand using your trademark.

Need help with your trademarks?

Contact Quick Off the Mark® here.

 

DISCLAIMER:

The advice provided in this blog is general advice only. It has been prepared without taking into account your business objectives, legal situation or needs. Before acting on this advice you should consider the appropriateness of the advice, having regard to your own objectives, legal situation and needs

BIO:

Quick Off the Mark® is a division of Mark My Words Trademark Services Pty Ltd (MMW). MMW was founded in 2011 and is headed by Jacqui Pryor, a registered trade marks attorney with more than 16 years experience.

In 2015 MMW acquired Quick Off the Mark®, which is a fast and affordable Australian trademark registration service. Quick Off the Mark® offers fixed fees that are affordable to help Australian businesses register their trademarks.

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