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. This has to do with her famous makeup line, but also her Instagram brand as the sixth most followed person on Instagram, and the most followed out of the Kardashian-Jenner clan. This is an astonishing following number and it seems she has the platform down to a T, including knowing the best time for instagram posts to be uploaded. However, trademarking her name cleary is an issue, as 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 is 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. Having all of those Instagram followers has probably given her so many opportunities that most people dream of. There are ways to match Kylie’s impressive Instagram following statistics though. Apparently, getting free ig followers is easy when you use the right apps. Maybe then you could experience what it’s like to have that sort of audience on your social media profile.
Because of all of the ventures she’s done with her name, Kylie could 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.