A name is a powerful thing, especially in the entertainment industry. Australian singer-songwriter Kylie Minogue knows first-hand how important a name can be, particularly when someone with your name files a trademark application for the same name.
In 2014, Kylie Jenner filed a trademark application with the United States Patent and Trademark Office (USPTO) for “Kylie”. The trademark was to be used for Jenner’s advertising services, endorsement services and her growing fashion and beauty line. Unfortunately for Jenner, Minogue had previously filed multiple trademark applications for “Kylie”, “Kylie Minogue”, and “Kylie Minogue Darling”. Minogue has also owned the trademark rights to her website, Kylie.com, since 1996, a year before Jenner was born.
Minogue and KBD Pty, the company representing her, filed a notice of opposition to point out that Minogue has already obtained multiple trademarks for the name across entertainment services and musical recordings. Minogue, known for more than just her musical talents and humanitarian efforts, is also a breast cancer survivor and a vocal breast cancer activist.
While anyone could potentially trademark their name, the problem enters when the new trademark is similar to an existing trademark in such a way that would lead to a likelihood of consumer confusion. A key issue in this matter is that the services that Jenner listed in her trademark application would be similar to the services that are associated with Minogue’s trademarks. KBD stated their concern for confusion to the singer’s fans.
KBD bitingly went on to state that “Ms. Jenner is a secondary reality television personality who appeared on the television series ‘Keeping Up With the Kardashians’ as a supporting character, to Ms. Jenner’s half-sisters, Kim, Khloe, and Kourtney Kardashian (i.e., the Kardashians). Ms. Jenner is active on social media where her photographic exhibitionism and controversial posts have drawn criticism from, e.g., the Disability Rights and African-American communities.”
It is not uncommon, especially in the entertainment industry, for celebrities to trademark their name. It is reported that Beyoncé and husband Jay Z filed a trademark application in 2016 for “Blue Ivy Carter”, the name of their daughter (Serial No. 86883293). The trademark became available for opposition on January 10, 2017. The trademark would cover goods and services for baby items, fragrances, video games etc. In 2012, the couple filed a trademark application for “Blue Ivy” but it was denied by the USPTO as the trademark was already being used by a wedding and event planner in Boston.
On January 19, 2017, Minogue withdrew her opposition allowing Jenner’s application to proceed but on Monday, February 6, 2017, the USPTO rejected Jenner’s request to trademark “Kylie”. Jenner plans to appeal the USPTO’s rejection. It is not known when she will appeal the rejection but it will be interesting to see what the USPTO decides after the appeal is filed.
Suiter Swantz IP is a full-service intellectual property law firm serving all of Nebraska, Iowa and South Dakota. If you have any intellectual property questions or need assistance with any patent, trademark or copyright matters and would like to speak to one of our patent attorneys please feel free to contact us.