Kylie Versus Kylie; Trademark Fight Erupts Over Famous First Name
Mar. 1, 2016 (Mimesis Law) — Kylie Minogue, the international pop queen and 13 time Grammy winner, has not taken too kindly to the attempts made by Kylie Jenner, of Kardashian reality show fame, to trademark their shared first name “Kylie”.
Minogue, represented by Australian-based KDB, filed a notice of opposition at the USPTO to Jenner’s trademark application on February 22. Jenner seeks to trademark the term in connection with advertising services. Minogue already owns trademarks that cover entertainment services and music recordings for the terms ‘Kylie Minogue darling’, ‘Lucky – the Kylie Minogue musical’ and ‘Kylie Minogue’”
What’s the big deal? Well, a trademark has two functions: firstly, to distinguish goods and services and thereby allow consumers to differentiate among competing products on the market; and secondly, to protect the trademark owner’s reputation and brand.
Minogue is claiming that her 30+ year-old established brand would be diluted and tarnished if connected with Jenner’s and cause confusion to the wider public. Her reasoning being that the public is more likely to associate the name “Kylie” with Minogue rather than Jenner. Cuttingly, Minogue states in her opposition that since Jenner is a “secondary reality television personality” who has received criticism from disability rights groups and African-American communities, her brand would be irreparably harmed by such an association.
While this may be true, it is worth noting that in her short time in the spotlight, 18-year old Jenner has amassed over 80 million followers across her social media accounts and launched several commercial ventures under her own name. She could thus argue her case under the trademark doctrine of secondary meaning:
“If a proposed trademark or service mark is not inherently distinctive, it may be registered on the Principal Register only upon proof of acquired distinctiveness, or “secondary meaning,” that is, proof that it has become distinctive as applied to the applicant’s goods or services in commerce. If the applicant establishes, to the satisfaction of the examining attorney, that the matter in question has acquired distinctiveness as a mark in relation to the named goods or services, then the mark is registrable on the Principal Register under §2(f) of the Trademark Act, 15 U.S.C. §1052(f).”
Therefore, Jenner would need to establish that consumers immediately associate the mark with her under the class of advertising services rather than Kylie Minogue.
It is now up to the USPTO to decide which Kylie can lay claim to the name. It will be worth keeping a close eye on the battle of the Kylies as the saga continues with Jenner’s application for “Kylie” in connection with entertainment services, recently published for opposition on February 23.