Caitlyn Jenner Abandons Trademark Applications after U.S. PTO Issues Rejections

Perhaps no celebrity family is as well known for pairing television fame with product licensing as the Kardashian / Jenner clan. Collectively, the family has an estimated net worth of over $1 billion, a popular television program and hundreds of millions of social media followers.

Recently, Caitlyn Jenner – former Olympian and parent/step-parent of the Kardashian / Jenner children – sought to develop new business opportunities in the skin-care industry. More specifically, on October 9, 2018, a corporation named “Cait’s World, Inc.” (which is presumably owned by Caitlyn Jenner) filed trademark applications for five new trademark applications, to wit:

CAITLYN’S SKINCARE (Serial No. 88148881);

CAITLYN JENNER SKINCARE (Serial No. 88148892);

SKINCARE BY JENNER (Serial No. 88148903);

JENNER SKINCARE (Serial No. 88148906); and

SKINCARE BY CAITLYN JENNER (Serial No. 88148910).

Each of these applications covered the following identical goods in International Class 003:

“Sunscreen; Non-medicated skin care preparations; Skin moisturizers; Skin lotions; Skin creams; Skin cleansers; Skin toners; Facial scrub; Body scrubs; Non-medicated skin care preparation, namely, facial mists; Non-medicated skin care preparation, namely, skin serums; Skin masks; Non-medicated skin care preparation, namely, facial balms; Facial oils; Body oils; Skin care preparations, namely, skin peels; Body powders; Cosmetics; Cosmetic preparations”

Such a “blanket” listing of goods is common for intent-to-use applications. In an intent-to-use application, an applicant is allowed to seek trademark protection over a mark as applied to certain goods / services without first making use of the mark in commerce. This means that an applicant can file a trademark application to protect anticipated product / service lines. The main requirements of filing an intent-to-use application are that the applicant have: (a) a bona fide intention to use the mark in commerce; and (b) a bona fide intention to use the mark in commerce as of the application filing date.

Intent-to-use applications are extremely useful tools for companies intending on commercializing a new product or service. For example, an intent-to-use application is fully examined and published for public opposition in the same manner as a use-based application. In the event that the trademark office and/or a third party raises an objection, the owner of an intent-to-use application can evaluate the pros and cons (especially the cost) of litigating before having already spent money on marketing or packaging. As another example, by filing an intent-to-use application (but refraining from commercializing until the application passes examination / publication), applicants can better insulate themselves against a potential civil trademark infringement lawsuit.

Bottom line: intent-to-use applications can enable an applicant to “test the legal waters” before investing in the brand – only to learn that there are cost-prohibitive legal obstacles to commercializing such brand.

In this case, filing intent-to-use applications was very prudent inasmuch as the Examining Attorney at the U.S. PTO did, in fact, raise a number of substantive objections – allowing Caitlyn Jenner’s team to navigate such issues before having invested in brand development.

Trademark Office Actions:

With respect to the CAITLYN’S SKINCARE application, the Examining Attorney refused registration on the basis of a prior-filed pending application, namely, U.S. Application Serial No. 87594916 for KAITLIN in Classes 3, 18 and 20.

With respect to the CAITLYN JENNER SKINCARE application, the Examining Attorney refused registration on the basis of a prior-filed pending application, namely, U.S. Application Serial No. 87594916 for KAITLIN in Classes 3, 18 and 20.

With respect to the SKINCARE BY JENNER application, the Examining Attorney refused registration, in part, on the basis of:

U.S. Reg. No. 5085603 for KYLIE LIP KIT BY KYLIE JENNER;
U.S. Reg. No. 5351328 for KYLIE JENNER;
U.S. Reg. No. 5601739 for KRIS JENNER;
U.S. Reg. No. 5411971 for KYLIE COSMETICS BY KYLIE JENNER; and
U.S. Reg. No. 5401125 for KYLIE KYLIE JENNER.

With respect to the JENNER SKINCARE application, the Examining Attorney refused registration, in part, on the basis of:

U.S. Reg. No. 5085603 for KYLIE LIP KIT BY KYLIE JENNER;
U.S. Reg. No. 5351328 for KYLIE JENNER;
U.S. Reg. No. 5601739 for KRIS JENNER;
U.S. Reg. No. 5411971 for KYLIE COSMETICS BY KYLIE JENNER; and
U.S. Reg. No. 5401125 for KYLIE KYLIE JENNER.

Finally, with respect to the SKINCARE BY CAITLYN JENNER application, the Examining Attorney refused registration on the basis of a prior-filed pending application, namely, U.S. Application Serial No. 87594916 for KAITLIN in Classes 3, 18 and 20.

These various refusals illustrate another important lesson in trademark law – a person does not necessarily own the rights to his or her own name. Here, this lesson is striking inasmuch as the registrations cited against SKINCARE BY JENNER and JENNER SKINCARE are owned by the applicant’s daughter and ex-wife, respectively.

Express Abandonment:

In a surprising “twist,” on January 31, 2019, Cait’s World, Inc. filed express abandonments for all five of these new trademark applications.

In briefly reviewing the Office Actions, it seems clear that Cait’s World could have raised a number of arguments in defense of its applications. Given the financing and sophistication of Caitlyn Jenner’s legal team, it seems clear that there was some other, non-trademark prosecution rationale for abandoning these applications.

For example, perhaps the decision was made to focus on exploiting another trademark or other goods such as Application Serial No. 86882880 for CAITLYN JENNER in Class 3 covering “cosmetic preparations; Cosmetics; Fragrances; Make-up remover; Nail care preparations; Nail polish; Nail polish remover; Non-medicated skin care preparations; Skin cleansers.” As another example, perhaps Caitlyn Jenner wanted to proactively avoid any possibility of confusion with the brands owned by ex-wife Kris Jenner or daughter Kylie Jenner.

If you are considering whether or how to protect your brands, call us today for a free consultation.