Trademark Wars: Kylie Vs. Kylie

I love a good trademark kerfuffle, because they make such great case studies for teaching trademark law principles. Boring law stuff is enlivened by a good story with a little intrigue and drama. So today, I bring you another edition of Trademark Wars: Kylie (Minogue) vs. Kylie (Jenner).

Unless you’ve been living under a rock (a blissful, peaceful rock…) for the past 10 years, you’ve doubtless heard of the Kardashian/Jenner clan, and their drama-filled and luxurious lifestyle, which is on display weekly on their E! Network reality TV show. Who can keep up with the twists and turns of America’s favorite reality television family? If you’re like me, you’ll likely ask, “Who cares?” And I don’t, unless I get to use them for my own purposes.

Confession: I know who the Kardashians are only because I sneakily read the tabloids whilst awaiting my turn in the checkout line at my local grocery. I’ve never seen an episode of their show, and but for tabloid media wouldn’t have a clue who these people are. But I digress….

On April 1, 2015 (Ha! April Fool!) Kylie Jenner filed a trademark application for KYLIE for “Advertising Services” and “Promoting the brands, goods, and services of others” (oh, to be an Instagram influencer!) and was later smacked down by Australian pop singer Kylie Minogue. (My reaction to this was, “Who?”, having never heard of her. But yet again, I digress…)

Apparently, Jenner’s application drew fire from Team Kylie (Minogue), who swiftly ended Kylie’s (Jenner) smooth path to a trademark registration by filing an Opposition to her trademark (Serial Number 86584742) after it was published for opposition.

The Notice of Opposition is juicy, and paints Kylie the Younger as a two-bit supporting character in the Kardashian clans’ soap opera, and Kylie the Elder as an international philanthropist, musician, humanitarian, and breast cancer survivor who crusades to promote public awareness for early detection of the disease. Quite noble and praiseworthy, to be sure.

The Notice of Opposition cites a number of pre-existing trademarks owned by the elder Kylie, for goods and services as diverse as “musical recordings,” “education and entertainment services,” “fragrance sprays for personal use,” “sound recordings,” “jewelry, necklaces, bracelets, brooches,” “dolls,” and “printed matter.”

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.”

Ouch.

The Notice alleges that should Kylie the Younger’s application issue, Kylie the Elder’s mark would suffer damage, due to Kylie the Elder’s priority rights to her long-standing registrations and the “likelihood of confusion” that would ensue.

Sight, Sound, and Commercial Impression

When deciding whether a proposed mark is “confusingly similar” to an existing registration, the United States Patent and Trademark Office (hereafter, “USPTO”) uses a number of factors, including whether the proposed mark is similar in sight, sound, and commercial impression. Because the marks in question are spelled and pronounced exactly the same, it’s hard to argue that they don’t give a similar commercial impression.

Also important is the channel of trade in which the goods will move. If the goods or services will be exposed to the same consumers (for example, if they will be purchased in the same retail outlet) then that is also a factor in the “confusingly similar” calculus. Remember, the purpose of a trademark is to distinguish the source of goods or services. If the consumer might reasonably be confused about who is behind the goods on offer, then the mark will be disallowed to protect the source identifier (trademark) of the senior mark holder — in this case, Kylie the Elder.

Because Kylie the Elder has priority in her KYLIE mark, and because no channels of trade were specified in Kylie the Younger’s application, it’s assumed that the younger KYLIE will be promoting her brand in using all avenues and for any and all purposes, hence the Opposition filing from the existing registrant. Had Kylie the Younger restricted her promotions to cosmetics, perhaps the outcome would have been different, but the broad strokes painted by her trademark application made it evident that Jenner was bent on world domination for her KYLIE brand. For Kylie the Elder, that’s a little too confusing.

The record shows that the parties entered into negotiations (Notices of Opposition are good for bringing everyone to the bargaining table) and while I’m not privvy to the particulars of the agreement, it looks like something was hammered out, because Minogue’s Opposition was withdrawn, and Jenner’s application is still live as of this publication.

NEXT: Part Two: Disparagement of a famous mark.

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

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