Intellectual Property Attorney

WHAT’S IN A NAME? KYLIE JENNER V. KYLIE MINOGUE TRADEMARK DISPUTE

From Cher and Madonna to Oprah and Beyoncé, many celebrities are known simply by their first names. The same is true of sports stars such as Yogi, Shaq, Pele and Nene. Often, such single-name personalities are also licensing powerhouses who have found success in trademarking their signature monikers.

For example, BEYONCÉ® is a registered trademark for perfume (Registration No. 4125777) and MADONNA® is a registered trademark for clothing (Trademark Registration No. 1463601). One of the best examples of mononymous branding is Oprah Winfrey, whose OPRAH® brand maintains trademark registrations for everything from tote bags and talk shows to pajamas and computer services. In fact, Oprah Winfrey may be the only person with the distinction of having trademarked her first name spelled both forwards and backwards. Oprah has secured trademark registration protection for HARPO® (which is also the name of Oprah Winfrey’s holding company) for entertainment services.

But now a new battle is raging in the world of single-name trademarks at the U.S. Patent and Trademark Office (U.S. PTO) over who, if anyone, owns the rights to the name “KYLIE“—Kylie Jenner or Kylie Minogue?

On April 1, 2015, “Kylie Jenner, Inc”—presumably the holding company for famed Kardashian family member Kylie Jenner—filed a trademark application for KYLIE (Serial No. 86584742) covering advertising services. Following standard procedure, the mark went through initial inspection at the U.S. PTO, was passed and was then published in the Official Gazette giving third parties an opportunity to object.

On February 22nd of this year, KDB Pty Ltd.—a company affiliated with Australian pop star Kylie Minogue—filed an Opposition against Kylie Jenner’s attempted registration of the KYLIE mark.

This tersely worded Opposition diminutively refers to Kylie Jenner as “home-schooled”, a “secondary reality television personality” and as being “active on social media where her photographic exhibitionism and controversial posts have drawn criticism from, e.g., the Disability Rights and African-American communities.” Conversely, the Opposition touts Grammy award winner Kylie Minogue’s various accolades including her having sold “over 80 million records” and her work as a breast cancer survivor and activist.

The Opposition also highlights the fact that Kylie Minogue’s first album was entitled “KYLIE”, that she owns the URL www.kylie.com and that her company owns six trademark registrations/applications containing various iterations of her name.

Perhaps most significantly, Kylie Minogue’s trademark portfolio includes a registration for KYLIE® covering, inter alia, jewelry and printed matter such as catalogues and magazines (Registration No. 3131572).

While Kylie Jenner’s company has yet to respond, a quick search of the U.S. Patent and Trademark Office database shows that Kylie Jenner’s trademark portfolio includes at least two registrations for KYLIE JENNER®, one registration for KENDALL & KYLIE®, and at least 15 pending applications containing the word “KYLIE”; including the currently opposed application for KYLIE.

In an interesting twist apparently missed by the media, Kylie Minogue’s attack seems to be reactive rather than
proactive.

On June 11, 2015, Kylie Minogue’s affiliated company filed a trademark application for KYLIE covering “[e]ducation and entertainment” services. On September 8, 2015, the U.S. PTO provisionally refused this application on the basis that it was likely to cause confusion with Kylie Jenner’s KYLIE JENNER® trademark registration as well as her earlier filed KYLIE trademark application (Serial No. 86584756). Among other lessons, this illustrates the crucial importance of early trademark filing. Had Kylie Minogue filed her application two months earlier, she may have avoided this entire situation.

According to documents obtained from the U.S. PTO, it appears that Kylie Minogue’s current opposition to Kylie Jenner’s KYLIE trademark application was a direct consequence of this provisional refusal.

The Kylie v. Kylie dispute illustrates the fine balance trademark law walks between, on the one hand, allowing members of the public to freely use the English language—especially their own names—and, on the other hand, protecting the public against confusion by giving only one party the exclusive right to use certain words. The current deadline for Kylie Jenner’s company to respond is April 2, 2016, and our blog will be there to report on this case as it develops.












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