BY: DAVID BERNARDONI
There’s more than one “Kylie” in town, but Kylie Minogue isn’t giving up her “Kylie” trademark protection without a fight.
Long before “Keeping Up With the Kardashians” became a television sensation, singer Kylie Minogue had hit sings such as “The Locomotion” and “Come Into My World.” She has even owned the website “www.kylie.com” since 1996. In 2006, Minogue trademarked “Kylie” in conjunction with the sale of certain types of goods (such as jewelry and dolls) and printed materials. However, when the Twitter and Instagram generation hear “Kylie” they are more likely to think of Kylie Jenner, the half-sister of Kim, Khloe and Kourtney Kardashian (the “Kardashians”).
In April 2015, Kylie Jenner filed a trademark application to register “Kylie” in connection with providing “advertising services.” After the United States Trademark and Patent Office (“USPTO”) allowed Jenner’s application to be published, in February 2016, attorney’s representing Minogue filed an opposition. In the opposition (click here for a copy), Minogue not only argued that she had priority over Jenner, but that there would be a likelihood of confusion if Jenner’s mark was registered. Minogue further argued that Jenner’s target customer and consumer base overlapped with Minogue’s customers and consumer base. The idea is that those persons familiar Minogue’s “Kylie” trademark would likely be confused, mistaken or deceived by Jenner’s use of “Kylie.” The dispute had all of the hallmarks of a big trial before the USPTO, but that day never came.
Despite news reports this week that the USPTO had issued a decision in favor of Minogue, the dispute was resolved. On January 26, 2017, Minogue’s opposition to Jenner’s application was dismissed, without prejudice. We may never know the terms of the settlement, but the “Kylie” trademark dispute is an excellent example of the need to complete a thorough trademark search prior to submitting an application to the USPTO. A thorough search can identify “confusingly similar” marks. If an application is filed, the applicant should be very careful to distinguish the goods and services being offered from those being offered by the owner of the similar mark.