On Feb 22, 2016 Kylie Minogue has filed opposition to reality TV personality Kylie Jenner (from the Kardashians’ clan) trying to trademark the word “KYLIE” for advertising, endorsement and entertainment services. I’ll use this opportunity to educate the public about U.S. trademark law.
Minogue opposes the trademark on the following grounds:
Priority and likelihood of confusion
Dilution by blurring
Dilution by tarnishment
We will now examine these grounds separately.
“Priority” just means Minogue claims she was the first one to use the word KYLIE in connection with goods or services in question. Unlike many countries, the United States confers trademark rights to whoever was the first one to use the mark in commerce. People often assume that once a federal trademark registration is obtained it confers the exclusive right to use the mark on particular goods or services. However, this is not true. If somebody can prove they’ve been using the trademark you registered with the USPTO prior to the date of your application, they can get priority rights to your TM.
So, how is Minogue trying to prove that she was the first one to use KYLIE as a trademark in the US? She maintains that:
– she has been in the entertainment industry since 1979 (longer than 18-year-old Kylie Jenner has been alive).
– Minogue’s first album titled “KYLIE” came out in 1988 and went gold in the United States.
– she has owned the website http://www.kylie.com since 1996, promoting a variety of goods and services.
– she is the owner of U.S. trademarks “KYLIE” for the classes of “education and entertainment”(2015), “sound recordings”(2013), jewelry, toys and catalogs (2006).
– she is the owner of a number of other U.S. trademarks with the word “Kylie” in them.
– Jenner’s mark “KYLIE” has not yet been used in U.S. commerce and is not currently in use in commerce.
LIKELIHOOD OF CONFUSION
To prevail on a “likelihood of consumer confusion” test, the oppose must show that a proposed trademark will infringe on an existing one if the proposed one is so similar to the original that consumers are likely to confuse the two marks, and mistakenly purchase from the wrong company. In other words, Minogue will win if she can show that when consumers look at a product or service branded KYLIE, they get confused as to whether Kylie Minogue has something to do with it or not.
Factors relevant to the likelihood of confusion test include: degree of similarity between the two marks; similarity of the goods and services; evidence of actual confusion; purchaser sophistication, etc.
Minogue claims that:
– the KYLIE trademarks she already owns are confusingly similar, even though they are registered for different classes of goods and services.
– the two Kylies’ target customer bases overlap.
– Jenner’s services description contains no restrictions or limitations as to her channels of trade. Therefore, the two Kylies’ channels of trade are also likely to overlap.
– persons familiar with Minogue’s existing KYLIE trademarks would likely “be confused, be mistaken, or be deceived into the belief that [Jenner’s] services are associated with, affiliated with, or sponsored by [Minogue].”
A concept of dilution in U.S. trademark law gives the owner of a famous trademark the right to prevent others from using that mark in a way that would lessen its uniqueness. Trademark dilution usually involves an unauthorized use of another’s trademark on products that do not necessarily compete with those of the trademark owner. For example, a famous fragrance trademark might be diluted if another company began using a similar mark for its auto oil change services.
Dilution is sometimes divided into two related concepts: blurring, or essentially basic dilution, which “blurs” a mark from association with only one product to signify other products in other markets (such as “Toyota shampoo“); and tarnishment, which is the weakening of a mark through unflattering associations (“Christian Dior toilet paper”).
To prove dilution by blurring and tarnishment, Minogue basically alleges that she is famous for positive reasons, whereas Jenner is a “secondary television personality” with questionable record. Specifically, Minogue claims:
– she is a breast cancer survivor, public health activist
– she has also been active both in the United States and around the world in a variety of high publicity humanitarian efforts,
– Jenner is a “secondary reality television personality” from the Kardashians’ clan whose “photographic exhibitionism and controversial posts have drawn criticism from, e.g., the Disability Rights and African-American communities.”
Photo sources: Minogue and Jenner’s Instagram accounts. Used for commentary and educational purposes.