The Battle of the Kylie Trademarks
On two different sides of the Atlantic reside two “Kylies” that have battled over legal rights to the sole use of the single word, “Kylie” in connection with a wide variety of goods and services. In the United States, Kylie Jenner (“Jenner”), reality star and half-sister to Kim Kardashian, filed for rights to use the single name “Kylie” in 2015. Her application for rights to “Kylie” was disputed, however, by Kylie Minogue (“Minogue”), an Australian pop star famous for her music since the 1980’s.
Jenner has filed multiple applications for use of “Kylie” in connection with a wide variety of goods and services, including but not limited to, entertainment in the nature of providing information by means of a global computer network in the fields of entertainment and pop culture; entertainment services, namely, personal appearances by a celebrity, actress and model; providing information by means of a global computer network in the field of fashion; advertising services namely, promoting the brands, goods and services of others; and endorsement services, namely, promoting the goods and services of others; and retail store services featuring gifts, general consumer merchandise, apparel, apparel accessories, calendars, gift wrap, phone cases, pins and buttons.
As many know, Minogue is also involved with several ventures that overlap with the goods and services covered by Jenner’s application. In fact, Minogue’s official website rests at www.kylie.com and simply bears “Kylie” as its title. Minogue has also made several personal appearances as a celebrity and model, famously modeling for the lingerie brands, Sloggi and Agent Provocateur, with the latter resulting in banned advertisement that gained notoriety and millions of views on the Internet. Moreover, as Jenner’s applications have been filed to cover any use of a “global computer network in the field of fashion,” such a broad registration would potentially keep Minogue from using the “Kylie” name in any sort of use with fashion (i.e., lingerie) online.
While trademark attorneys regularly file applications to cast as wide of a net as possible in terms of goods and services covered, it is not uncommon for the U.S. Trademark Office to initially reject these claims as too broad or, in the alternative, to later reject them after publication because an opposition has been filed.
While sources say that Jenner intends to appeal the rejection, it is also likely that Jenner may seek a compromise with Minogue by narrowing the goods and services listed on her application in order to secure some legal rights to the name “Kylie” in the United States. It may be unwise, however, for Minogue, to accept such a compromise because it could ultimately block Minogue from entering into any of the lucrative channels that Jenner has filed for, even if Minogue cannot demonstrate current use of “Kylie” in such fields. As long as Minogue has any interest in entering those fields in the future, she may not wish to concede any legal rights to the use of “Kylie” to Jenner now.
Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX. The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights. The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution.Additional information about the trademark law firm and its trademark attorneys may be found at www.klemchuk.com.
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