The battle of the Kylies

The Kylie Minogue and Kylie Jenner trademark battle was picked up by at least 200 news publications across the world. WIPR looks deeper into the issue and asks who might win.

Here at WIPR, a recent Monday started like any other. The editorial team arrived at work ready for a new week and began looking for news stories and developments to cover for the week ahead.

But it was when we checked the most-read stories over the weekend that we realised something was different.

On what would usually be a reasonably quiet Sunday afternoon, tens of thousands of people had checked into WIPR within just a few hours to read about what we had assumed was a fairly innocuous trademark dispute between Minogue and Jenner. Filed at the US Patent and Trademark Office (USPTO), the wrangle centres on the name ‘Kylie’.

Over the next few days the story was covered by more than 200 other websites.

As is often the case with mainstream coverage of IP disputes, the headlines were a little misleading and talked of a battle to “own” the name Kylie.

This, of course, is not true and at the time of publication the dispute centred only on one prospective trademark in connection with advertising services.

But given the popularity of the story, WIPR decided to look at the case in more detail and ask whether Minogue has a valid claim or if her opposition will be swatted away?

‘Secondary TV personality’

Jenner, famed for her role in the TV show “Keeping up with the Kardashians”, applied for the trademark in April last year. It was published for opposition that August.

Australian Minogue, through a business called KDB, opposed the application at the USPTO’s Trademark Trial and Appeal Board on February 22. KDB said if the application was approved it would cause confusion among consumers between the two Kylies and dilute Minogue’s brand.

KDB went on to label Jenner a “secondary reality television personality” who has received criticism from disability rights groups and African-American communities for her “photo exhibitionism”.

The opposition also cited trademarks Minogue owns for the terms ‘Kylie Minogue darling’, ‘Lucky – the Kylie Minogue musical’ and ‘Kylie Minogue’.

"If you are not selling products bearing the ‘Kylie’ mark but are selling other products then it is hard to argue for likelihood of confusion.”

Ralph Cathcart, partner at law firm Ladas & Parry, says of the three grounds for opposition asserted in the dispute—priority, likelihood of confusion and dilution—the claim for likelihood of confusion is most likely to succeed.

But he adds: “The opposed mark is not an especially strong case as it is directed to advertising and promoting the brands and goods of others. If you are not selling products bearing the ‘Kylie’ mark but are selling other products then it is hard to argue for likelihood of confusion.”

More disputes on the horizon

Since WIPR’s first story was published, another application has been filed by Jenner, this time for ‘Kylie Cosmetics’, and KDB has also submitted a request for an extension to the opposition period for another ‘Kylie’ application that relates to entertainment services.

At the time of writing, the ‘Kylie Cosmetics’ application had not been published for opposition.

“I see the ‘Kylie Cosmetics’ application as being the most problematic,” Cathcart says.

“Minogue has existing registrations for fragrances and this application is not for intent to use; Jenner is claiming it is being used already. It may make for an interesting battle.”

Cathcart adds that he expects the oppositions, however many there are in total, to be consolidated.

While Minogue may have a strong chance with opposing the ‘Kylie Cosmetics’ (for fragrances) and ‘Kylie’ (for entertainment services) marks, a dilution claim is still unlikely to succeed, Cathcart says.

“I’m not sure Kylie Minogue approximates the fame to succeed with a dilution claim yet,” he says, adding that celebrities with one name such as Madonna or Cher may be more likely to succeed with that argument.

For a dilution claim to succeed a trademark owner must prove that its mark is famous enough to be affected or “diluted” by other uses.

“If you took a survey of 30 to 55-year-olds in the US and asked them who ‘Kylie’ was, many would not know. Of course, plenty of people would know, but there would not be an immediate association across the board,” Cathcart says.

He adds: “To succeed with a dilution claim you have to show that your mark is famous enough—Coca Cola being an iconic example.”

Although her opposition may ultimately be granted, it seems that in order to prove dilution of her brand, Minogue may have to prove to US residents that she is the one and only Kylie. She should be so lucky.