Trademark Wars: Kylie vs. Kylie, Part Two

See part one here.

More on the Kylie vs. Kylie Trademark Kerfuffle…

Using a logo, name or other symbol that is “confusingly similar” to that of a famous brand can be considered trademark disparagement.

Trademarks are also entitled to protection against “dilution,” which is the use of a similar mark — especially a famous mark — on products that are unrelated to the products protected by the famous mark. It’s prohibited because it lessens the capacity of the famous mark to identify goods and services, regardless of whether the copycat mark’s goods are in competition with the goods of the famous mark, and irrespective of a likelihood of actual confusion in the mind of the consumer.

Dilution happens when there is a “blurring” of the established brand identifier, which whittles away at the power of the famous mark via its unlicensed use by infringers on other products, even if those products are dissimilar to those of the famous brand. Dilution can also “tarnish” an established brand by linking the brand to products and services of lesser quality or portraying the brand in an unflattering, unsavory, or unwholesome context.

The entertainingly-cutting Notice of Opposition notes, among other things, that the junior Kylie is “a home-schooled graduate of Laurel Springs School,” “a secondary reality television personality,” and a social media persona whose “controversial posts have drawn criticism from…the Disability Rights and African-American communities.”

Kylie the Elder alleges that due to some of the unflattering publicity that Kylie the Younger’s social media activities have gotten from the African-American and Disability Rights community, the elder Kylie’s reputation as a humanitarian will be “tarnished” if Kylie the Younger’s mark is allowed to register.

United States Trademark Law (also known as the Lanham Act) provides for injunctive relief against any use of a famous mark that causes the famous mark to be diluted via tarnishment or blurring:

15 USC 1125 (c)(1) provides: “Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.”

I’d love to know how the kerfuffle ended, but it’s not part of the trademark record. The record shows that the parties entered into negotiations, and it looks like something was hammered out, because Minogue’s Opposition was withdrawn, and Jenner’s application is still live as of this publication.

The Moral of the Story: Be very, very careful when approaching anything remotely similar to a famous trademark. You’re likely to receive a lot of publicity when you are sued for injunctive relief or your mark is opposed by the holder of the famous mark.

Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand.

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