Edited by Loni Morrow and and Jonathan Hyman
Under U.S. trademark law, any person (including a celebrity) can obtain a trademark registration for their name if they can establish that the public recognizes the name as a source identifier for certain products or services. Celebrities frequently obtain a federal trademark registration for “entertainment services.” These include Kim Kardashian, Taylor Swift, Katy Perry and Justin Bieber, to name a few (See, e.g., Reg. Nos. 3371751, 3429635, 3682086, and 4396533). Difficulties can arise, however, when a celebrity attempts to register their name, or a portion of their name, with the U.S. Patent and Trademark Office (“USPTO”) in connection with collateral branding items such as clothing, cosmetics, or jewelry, particularly if there are third parties that use a similar name for similar products or services.
Most recently, Kylie Jenner, notable for her role in the reality show, Keeping Up with the Kardashians, has received attention in the media for an opposition battle with Australian pop star, Kylie Minogue. Jenner applied for the mark KYLIE in connection with advertising services, entertainment services, and providing information in the field of fashion via a global computer network. Jenner also filed for KYLIE COSMETICS in connection with cosmetics. Kylie Minogue (through her corporate affiliate) filed a Notice of Opposition to block the registration of the Jenner marks based on Minogue’s alleged prior use and registration of several KYLIE-formative marks in connection with her entertainment services, as well as other goods and services including perfume, musical recordings, and jewelry.
Some news outlets have incorrectly reported that Jenner recently “lost” her trademark battle with Minogue when, in fact, Minogue withdrew her opposition without prejudice after the parties apparently reached a confidential settlement agreement. On January 26, 2017, the Trademark Trial and Appeal Board terminated the proceedings. Jenner’s applications should mature to registration, after she submits evidence showing she has used the KYLIE mark on the goods and services. Because Minogue’s opposition was withdrawn without prejudice, Minogue could still seek to cancel any of Jenner’s resulting registrations, provided that Minogue is not prevented from doing so by the settlement agreement.
What is receiving less attention is Kylie Jenner’s recent “battle” with the USPTO. Jenner filed an intent-to-use application for the mark KYLIE JENNER for clothing items. The USPTO refused registration of the KYLIE JENNER mark based on a likelihood of confusion with a prior registration for the mark KYLEE owned by Mimo Clothing Corp. for clothing. The KYLEE registration was filed on April 25, 2011 and claimed a date of first use as early as January 1, 2011, pre-dating the KYLIE JENNER application by over four years. Jenner attempted to overcome the Office Action by arguing that there is no confusion between the marks. She argued that the inclusion of the name “Jenner” in her mark creates a unique commercial impression due to her fame as a “reality tv star, fashion trend-setter, and social media personality,” among other reasons. The Examining Attorney was unpersuaded, and maintained that Kylie Jenner’s fame made confusion more likely, as consumers would believe that Mimo was trading upon the goodwill of Kylie Jenner, when, in fact, Mimo used the mark first. This type of confusion is called “reverse confusion.” Jenner has appealed the Examiner’s refusal to the Trademark Trial and Appeal Board and that action is still pending.
Other celebrities have also faced difficulties when attempting to register names as trademarks. Beyoncé’s holding company, BGK Trademark Holding Company (“BGK”), applied to register the mark BLUE IVY CARTER for a number of goods and services, including entertainment services, sporting equipment, baby strollers, and fragrances. The application was filed on January 26, 2012 19 days after Blue Ivy was born, and allowed by the USPTO in January 2013. Interestingly, two enterprising applicants filed for BLUE IVY CARTER NYC (filed January 11, 2012) and BLUE IVY CARTER GLORY IV (filed January 20, 2012). Both of these applications were refused under Section 2(a) and 2(c) of the Lanham Act for creating a false association with the weeks old baby Blue Ivy. To receive the registration, BKG had to file evidence that it used the mark on the goods and services by January 2016. BGK failed to provide evidence of use of the mark by the deadline, and the application fell abandoned. That same day, however, BGK filed a new application for the BLUE IVY CARTER mark for the same goods and services as those in the abandoned application. This second application was approved by the USPTO, but Blue Ivy Events, a company based in Cambridge, Massachusetts that owns a registration for BLUE IVY for event planning services, has extended time to oppose the BGK application. Blue Ivy Events has until May 10, 2017 to file a Notice of Opposition or further extend the opposition deadline with BKG’s consent.
While celebrities undoubtedly wield a tremendous amount of influence on popular culture, they must navigate the complexities of U.S. trademark law and the USPTO just like any other business or non-celebrity. The USPTO’s application procedure can be tricky and Byzantine. Challenges can arise from both USPTO Examining Attorneys and other parties, as exemplified by Jenner’s and BGK’s applications. In some ways, celebrities may be at a disadvantage to the average citizen. For example, it can be more difficult for celebrities to argue against likelihood of confusion with another mark on the basis that their goods or services are limited to a specific set of consumers in a narrow market or field. This is because the usual purpose of such collateral branding is to expose the celebrity’s branded products to a large swath of consumers in a wide variety of trade channels (although this can, of course, vary by the celebrity and the branded product). In either case, both celebrities and non-celebrity citizens can benefit from the guidance of professionals familiar with trademark law and the federal registration procedure, whether it is responding to a refusal from the USPTO or negotiating a co-existence agreement in an opposition proceeding.
