Trademark Wars: Battle of the Kylies - Fordham Intellectual Property, Media & Entertainment Law Journal
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Trademark Wars: Battle of the Kylies

Trademark Wars: Battle of the Kylies

Because you can’t escape Kardashian/Jenner news, you’ve probably heard that Kylie Jenner filed a trademark application for her first name with the USPTO. With the success of the 18-year-old’s app, clothing line, and Lip Kit by Kylie, Jenner is preparing to expand her brand, and her company, Kylie Jenner, Inc., filed two intent-to-use trademark applications for the mark ‘KYLIE’ under International Classes 35, 41, and 45.1

The filing at issue with 47-year-old Australian pop star and actress Kylie Minogue is the one filed under class 35, which covers promoting goods and services. The application was filed on April 1, 2015 and published in the Official Gazette for opposition on August 25, 2015. On February 22, Minogue’s company, KDB Pty Ltd, filed a notice of opposition with the Trademark Trial and Appeal Board (TTAB), citing the grounds for opposition as priority and likelihood of confusion, dilution by blurring, and dilution by tarnishment.2

With regard to prior use, the notice of opposition asserts that Minogue has been using ‘KYLIE’ in commerce before Jenner was even born. She’s been in the entertainment industry since 1979. Her first album, released in 1988, is titled KYLIE. She’s also owned the website www.kylie.com since 1996.3 KDB has registrations for ‘KYLIE’ for sound recordings, registered in 2013, and ‘KYLIE’ for jewelry, catalogs, and dolls and toys, registered in 2006. It filed an application for ‘KYLIE’ under International Class 41 for education and entertainment in 2015. KDB also owns several trademarks with the word “Kylie” in them, including an application for ‘KYLIE MINOGUE DARLING’ for fragrances and registrations for ‘LUCKY – THE KYLIE MINOGUE MUSICAL’ for live musical performances and ‘KYLIE MINOGUE & Design’ for fragrances and jewelry.

The notice of opposition claims that if Jenner’s trademark were granted, there would be overlap in channels of trade as well as “with the customers and consumers of [Minogue’s] goods and services.”4 Minogue argues that consumers that are familiar with her trademarks will be confused with Jenner’s mark, resulting in the belief that Jenner’s goods and services are affiliated with Minogue’s goods and services.5 Minogue will have to demonstrate to the TTAB that actual confusion will occur in the U.S. market if Jenner’s trademark is granted.

Minogue also alleges dilution by blurring—associating her mark for one product for different products in other markets—and dilution by tarnishment—unflattering associations with her mark.6 Minogue’s lawyers refer to Jenner as a “secondary reality television personality,” suggesting that Jenner is lesser known than Minogue and that the public associates the name Kylie with Minogue rather than Jenner. The notice of opposition also compares Jenner’s “criticism from e.g., the Disability Rights and African-American communities” to Minogue’s reputation as an “internationally renowned performing artist, humanitarian, and breast cancer activist.”7

The ‘KYLIE’ mark under classes 41 and 45 was published for opposition on February 23, so KDB could go after these as well. However, celebrity trademark disputes tend to settle. Can’t Kylies all just get along?

Image: Kylie Minogue image courtesy of Daily Mail; Kylie Jenner image from @kyliejenner Instagram.

Jen Gordon

Jen Gordon is a second year student at Fordham University School of Law and a staff member of the Fordham Intellectual Property, Media & Entertainment Law Journal. She studied Music Industry at Northeastern University, which sparked her interest in IP law.