What’s in A Name? Everything If Your Name Is Kylie Jenner

We’re saturated with Kylie Jenner.  She has a celebrity.  She’s all over reality TV as a Kardashian adjunct.  She regularly graces the covers of tabloids.  She has tens of millions of followers as a social media icon.  She has a burgeoning career as a fashionista, either selling or planning to sell clothing, cosmetics and accessories.

What she doesn’t have is trademark rights in her name.  The reason is that trademark rights for these and for other related and unrelated goods and services are owned by Kylie Minogue.

For those of you not familiar with that name, Kylie Minogue is an Australian-based music superstar and has been for over 15 years. She’s sold more than 65 million albums, toured the world as a musical artist multiple times and has a new recording contract with BMG.  She’s won Grammys, Brit Awards (the UK’s Grammys) and many other awards and accolades, including for her humanitarian efforts and breast cancer activism.  She’s owned the website www.kylie.com for over 10 years.  She’s known worldwide simply as “Kylie”.

Kylie Minogue has several U.S. trademark registrations for her name, dating back to 2006. They include such things as being an entertainer, as well as in connection with jewelry, cosmetics, clothing, and accessories.

Trademark affixes to goods or services when they’re first used in connection with them in “interstate commerce – either commerce among the United States or between the U.S. and another country.  Additionally, a trademark can become so famous and so connected in the minds of the public with a certain person or source, that its owner can prevent others from trying to use that name or brand in connection with totally unrelated goods and services.

Kylie Minogue has been very famous for far longer than Kylie Jenner.  Kylie Minogue’s registrations have been in existence here for so long that under U.S. law, they’ve likely become incontestable.  Their priority to Kylie Minogue is practically impossible to attack.

Despite this, Kylie Jenner decided to start filing trademark registration applications here for “Kylie” marks in 2015, initially for her name to be used as a trademark in relation to advertising, entertainment and personal appearances “by a celebrity actress and model”.  She apparently has others pending for her burgeoning fashion and accessories businesses.

When Kylie Minogue’s representatives became aware of Kylie Jenner’s application for advertising, entertainment, and personal appearances, they filed an Opposition to Kylie Jenner’s application in the U.S. Trademark Office.  The Opposition claims, among other things, that allowing Kylie Jenner’s application to proceed would create what’s called in trademark parlance a “likelihood of confusion” in the minds of the public as to where “Kylie”-branded goods and services come from, as well as damage Kylie Minogue’s branding of her goods and services.

Part of Kylie Minogue’s Opposition stated that Kylie Jenner is a “secondary reality television personality” prone to “photographic exhibitionism and controversial posts” on social media. (But how do you really feel, Ms. Minogue?)

Based on all this, it shouldn’t have been a big surprise that the U.S. Trademark Office earlier this week threw out Kylie Jenner’s application.  Not to be out-Kylied, Kylie Jenner has filed an appeal.  We also don’t know if Kylie Minogue will try to oppose Kylie Jenner’s other pending trademark applications, due to a likelihood of confusion.  So, it looks the battling Kylies will likely be fighting about this for a while.  (I wonder if there’s a reality show in all this).

What’s surprising to me is that Kylie Jenner should’ve known about Kylie Minogue’s existing registrations.  I always advise my clients to first run a full, proper trademark search before they put any money or effort into a brand, to make sure that trademark is available to them for the goods and services they want to brand with it.  A “Kylie” search would have turned up Kylie Minogue’s trademark registrations in the U.S.  Kylie Jenner consequently could have saved herself a lot of time and money applying and then fighting for her trademarks.  (Perhaps it’s not false news that Kylie Jenner spending money, even in obscene amounts, doesn’t concern her).

She also could have entered discussions with Kylie Minogue to see if they could negotiate a co-existence agreement.  This basically allows similar trademarks to exist under certain rules and restrictions.

But instead, Kylie Jennifer decided to file and fight.

Don’t make the same mistake.  Get real(ity).  Make sure a trademark/brand you want to use is available for your goods and services before you invest a lot of time, effort and money in it.

Just Sayin’ . . . TM