Here’s one to watch: Trade mark Battle of the Kylies- Kylie M. v. Kylie J.

by Lisa D. Rhooms

It is particularly difficult to register a name as a trade mark, as it is difficult for a name, which many people may have, to fulfil the purpose of a trade mark which is to denote origin. Nevertheless, names have been registered, and this is usually easiest where one has a unique name, and better yet, a completely made up name which relates only to one person, as the origin function will be more easily achieved. Just this February past however, gloves are off in a new trade mark battle between Kylie Minogue and Kylie Jenner. For those who may be unfamiliar, Kylie Minogue is a well-known pop artiste from Australia, while Kylie Jenner is known more widely as the last born sibling of the Kardashian/Jenner family, an American reality TV family, though she is also a socialite, model and entrepreneur.

In April 2015, Kylie Jenner filed an application to register her first name ‘KYLIE’ as a trademark in the United States, for International Class 35, which relates to advertising services, that is to say: branding, endorsement and promotion of goods[1]. This application was published for opposition in August 2015, and has prompted objection from Kylie Minogue, who, on February 22, 2016, filed a notice of opposition[2] with the United State Patent and Trademark Office, to be heard before the Trademark Trial and Appeal Board.

In the notice of opposition, Kylie Minogue cites three grounds for opposition, these being: priority/confusion, dilution by blurring and dilution by tarnishment. Each will now be dealt with in turn. Section 2(d) of the Lanham Act[3], speaks to confusion, and states the conditions under which a mark may be refused registration on the principal register. Such a case is where the mark seeking to be registered:

“Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive…”[4]

This section continues to describe the issue of priority where marks may be deemed as not having met the confusion threshold, which will lead to a situation where there is concurrent registration of the marks, which can extend to uses of such marks in commerce.[5]

The next ground of opposition is dilution and in the United States, there are two forms of dilution, both raised by Kylie Minogue, which are dilution by blurring and dilution by tarnishment. Dilution by blurring and tarnishment are dealt with in section 43(c) of the Lanham Act. While section subsection (1)[6] of 43(c) speaks to the relief available to the owner of a famous mark in a dilution matter, section 43(c)(2)(b) defines what blurring is as “…association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.”[7] It then list the factors the court may consider, including how similar the marks are,[8] and the extent to which the owner of the mark had previously significant, within the relevant market, unshared use of it.[9]Section 43(c)(2)(b) continues, to describe dilution by tarnishment as being an “…association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.”[10]

In the factual background to the opposition, Kylie Minogue, sets out that she is the owner of several registered trade marks in the United States, some from even as early as 2006, including “KYLIE MINOGUE DARLING” for body products and cosmetics[11], and the mark “KYLIE” for several categories, these being for, “Education and entertainment”[12], also in International Class 9 which deals with music videos and even accessories for cellular devices[13], International Class 14 which deals with jewellery and the like,[14] International Class 16 dealing with printed material, fashion and stationary[15] and International Class 28, dealing with children’s toys.[16] Kylie Minogue claims that she is also the holder of the mark “LUCKY- THE KYLIE MINOGUE MUSICAL”[17] for concerts, live performances and similar events, and the owner of mark for “KYLIE MINOGUE & Design” for perfumes and jewellery.[18]

Referring to Kylie Jenner as a “secondary reality television personality”,[19] Minogue opposes the application by Jenner on the basis that not only does her use of the mark predate Jenner’s use, but also that Jenner’s use of the mark has not been “use in commerce”[20], and to grant the mark would “violate and diminish the prior superior rights”[21] held by her. Further, as described above, that the mark “KYLIE” sought to be registered by Jenner, and the services for which registration has been sought, is so visually and aurally similar, almost identical to registered marks owned by Minogue, that registration would likely cause confusion within section 2(d), which then, is likely to cause her damage and injury to her reputation, as the public might be led to incorrectly believe that Jenner’s mark is her mark, or they are somehow connected. Minogue also raises the investment argument, that being, that much money has been spent protecting the “KYLIE” mark, which would be disturbed by the registration of Jenner’s mark, and further her exclusive use of the mark would be damaged.[22]

On the grounds of dilution, Minogue claims that her marks are indeed famous as required by section 43(c)(2), and the relevant market now associates the mark “KYLIE” with her. Additionally, her marks and particularly “KYLIE”, are distinctive, granting them protection under section 43(c), and making them subject to the provision relating to blurring and tarnishment. Minogue therefore puts forward, that the registration of Jenner’s mark will harm the “KYLIE” mark’s distinctiveness and even damage its reputation all together.

Surely this case will be decided in line with the clear provisions of section 2(d) and 43(c), as well consider other sections, including perhaps seeking the direction of the definitions in section 45 of distinctiveness, and whether there has been “use” by Jenner in commerce, as required. This will be an interesting battle, and definitely one to watch, as it will be quite fascinating to see which Kylie will reign supreme. Her name might very literally depend on it!

Lisa Diana Rhooms

Assistant Editor, QMJIP

 

[1] ttp://tsdr.uspto.gov/#caseNumber=86584742&caseType=SERIAL_NO&searchType=statusSearch <accessed March 4, 2016>

[2] See notice of opposition here http://ttabvue.uspto.gov/ttabvue/v?pno=91226456&pty=OPP&eno=1 <accessed March 1, 2016>

[3] Lanham (Trademark) Act, 1946

[4] ibid s. 2(d)

[5] ibid s. 2 (d)

[6] ibid s. 43 (c) (1) “Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.”

[7] ibid s. 43(c)(2)(b)

[8] ibid s. 43(c)(2)(b)(i)

[9] ibid s. 43(c)(2)(b)(iii)

[10] ibid s. 43(c)(2)(c)

[11] Notice of Opposition (n 2) para 8

[12] ibid para 9

[13] ibid para 10

[14] ibid para 13

[15] ibid para 13

[16] ibid para 13

[17] ibid para 11

[18] ibid para 12

[19] ibid para 17

[20] ibid para 22

[21] ibid para 23

[22] ibid paras 38 and 39