Celebrity Branding - Famous Names as Trademarks
Although celebrities frequently receive special treatment by others, in the world of trademarks they are subject to the same laws and rules that other trademark applicants must adhere to in the registration process. Many celebrities have taken the entrepreneurial path, and have commenced branding programs using their names to sell a variety of goods such as clothing, fragrances, cosmetics, jewelry, hand bags and the like; in addition to promoting services such as entertainment services and public and motivational speaking. Under U.S. trademark law the celebrity name must function as a trademark, and indicate the source of the goods or services.
Many celebrities have succeeded in registering their names as trademarks including, U.S. President Donald Trump, First Lady Melania Trump, Beyonce´, Taylor Swift, Rihanna, Victoria Beckham, Justin Bieber, Bruce Springsteen, Katy Perry, Kylie Jenner etc. However, not only must the name act, as a source identifier, but it cannot cause a likelihood of confusion with another pending application or registered mark. If a celebrity's name causes a likelihood of confusion with another mark in an application or registration, the celebrity's application will be refused.
An example is Kylie Jenner's application to the USPTO for the mark KYLIE JENNER for a variety of clothing items in class 25. This application was refused due to the registered mark KYLEE also for apparel items owned by Mimo Clothing Corp. The Examiner explained that the different spellings of KYLIE and KYLEE were not sufficient to distinguish the marks because the terms are phonetic equivalents that sound the same. Similarity in sound alone may be sufficient to support a finding that trademarks are confusingly similar. The Examining Attorney explained that this could be a case of "reverse confusion". The U.S. Trademark Act not only protects against the senior user being confused as the source of the junior user's mark, but also protects against the junior user being perceived to be the source of the senior user's goods. The USPTO acts to prevent consumer confusion. The Examiner explained that consumers could mistakenly believe that KYLIE JENNER clothing and KYLEE clothing originate from the same source when this is not the case.
Next, Kylie Jenner's corporation filed a petition to cancel the registration KYLEE. The owner of the KYLEE registration, Mimo Clothing Corp. defaulted, and the petition to cancel was granted. This removed the obstacle for the KYLIE JENNER mark for specified apparel items, and the application is now moving to the publication phase. Unfortunately, this was not the only experience for Kylie Jenner in the trademark world. She had another dispute, and this one involved another famous "Kylie", Kylie Minogue.
Kylie Minogue opposed Kylie Jenner's mark KYLIE COSMETICS for cosmetic goods at the Trademark Trial and Appeal Board Board ("TTAB" or the "Board"). Kylie Minogue's company objected to Jenner's mark based on priority of use and likelihood of confusion, dilution by blurring, and dilution by tarnishment. Minogue's company cited several marks as a basis for opposition, these included marks, KYLIE as an independent term and other marks that incorporated her first and last name for a variety of goods and services, and among the goods were cosmetics. It appears from the records at the TTAB that the parties filed a motion upon consent to suspend the proceedings due to settlement negotiations. Kylie Minogue's company withdrew the notice of opposition, and the matter was dismissed without prejudice (public records can be viewed through the TTABVUE platform by searching Opposition No. 91230590). This matter appears to have settled, and Kylie Jenner's trademark application for KYLIE COSMETICS has moved on in the trademark process. However, as of today's date, KYLIE COSMETICS has not yet registered.
Other celebrities have had difficulty registering their names as marks. It is often presumed that one is entitled to use their name for branding. See our web page entitled, Can You Use Your Name As A Trademark, for details on this topic. Since trademark law is filled with subtleties and nuances, an applicant is well advised to seek counsel of a trademark practitioner in advance of filing a trademark application. Please feel free to contact our office for a courtesy consultation, and we will be happy to answer all of your trademark questions.