In a decision surprising absolutely nobody, on Monday the Supreme Court ruled that the U.S. Patent and Trademark Office (USPTO) could not refuse to register trademarks even if they are  “immoral or scandalous.”  The trademark at issue involved the use of the mark “FUCT [F-U-C-T]” for clothing and merchandise.

The Court held that the First Amendment right to free speech trumps Section 1052(a) of Lanham Act (Section 2(a)), which prohibits the use of “immoral, deceptive, or scandalous matter; or matter which may disparage….”

The Slants, the Washington Redskins and Free Speech vs. Disparaging Trademarks

The Court’s recent decision was merely the final domino to topple in the domino chain reaction that started back in 2010 when Simon Shiao Tam, the lead singer for an Asian rock band attempted to register “The Slants” as the name of the band.  The USPTO rejected The Slants’ application, finding it was disparaging to people of Asian descent.  Tam appealed, and the Federal Circuit Court ultimately held that the USPTO’s refusal to register the trademark violated Tam’s First Amendment right to free speech. The Supreme Court affirmed the Federal Circuit Court’s decision, holding that the disparagement clause of  Section 2(a) “violates the Free Speech Clause of the First Amendment.”

The Supreme Court’s Tam decision effectively rescued the Washington Redskins’ trademarks, which the USPTO was in the process of cancelling as disparaging to Native Americans.

The FUCT Trademark, and the Final Domino

The Slants and Washington Redskins’ trademarks addressed Section 2(a)’s prohibition of disparaging trademarks, but the FUCT trademark attacked Section 2(a)’s prohibition of “immoral or scandalous matter….”  When Erik Brunetti sought to register the mark FUCT for his clothing brand, the USPTO refused to register the mark, finding that “‘FUCT’ is the past tense of the verb ‘fuck,’ a vulgar word, and is therefore scandalous.”  Brunetti appealed, the Federal Circuit agreed that the mark FUCT is vulgar, but followed the Supreme Court’s Slants decision, holding that “the bar in Section 2(a) against immoral or scandalous marks is unconstitutional because it violates the First Amendment.”

Justice Kagan, writing for a 6-3 majority, held that “the Lanham Act’s prohibition of ‘immoral [ ] or scandalous’ trademarks violates the First Amendment.”  The Court noted that historically the USPTO would refuse to register a mark if the mark was “shocking to the sense of truth, decency, or propriety” or “giving offense to the conscience or moral feeling.”  The Court noted and did not disagree with the USPTO’s conclusion that the FUCT mark “flunked the test” and was “a total vulgar.”  However,  Brunetti brought a facial challenge, basically conceding that his mark was vulgar but arguing that the “immoral or scandalous” prohibition violated his First Amendment right to free speech.  The Supreme Court agreed that Section 2(a)’s prohibition of immoral and scandalous marks is unconstitutional.

As I wrote last year, the Court’s decision is likely to spur a race to the bottom, with certain businesses seeking to gain attention and market share via shocking, vulgar and/or scandalous trademarks from the USPTO.

Under the American Rule “each litigant pays his own expense, win or lose, unless a statute or contract provides otherwise.” But recently the United States Patent and Trademark Office (USPTO) has sought to flip the American Rule by seeking to recover its attorney’s fees even when it loses.

EXPENSES UNDER THE LANHAM ACT AND PATENT ACT

Parties seeking to register a trademark (symbols or words representing a company, product or service) or a patent (exclusive right to use of invention) must register their applications with the USPTO. If the USPTO rejects their applications, the parties can appeal to their local federal district court or the Federal Circuit Court of Appeals. The Lanham Act, which governs trademarks, provides that  “all the expenses of the proceeding shall be paid by the party bringing the case…” 15 U.S.C. 107(b)(3); The Patent Act, which governs patent applications, provides that “[a]ll the expenses of the proceedings shall be paid by the applicant. 35 U.S.C §145.

Historically, the USPTO only sought reimbursement of costs (travel, expert fees, etc.) borne from opposing these trademark or patent appeals, but in 2013, the USPTO began seeking reimbursement of its attorney’s fee as well.

WHEN YOU LOSE, YOU LOSE

In Nankwest, Inc. v. Matal,(E.D. Virginia 2016) 162 F. Supp.3d 540, the applicant challenged the USPTO’s decision rejecting its patent application.  The trial court partially accepted and partially rejected the challenge to the USPTO’s decision. The USPTO sought to recover its attorney’s fees along with its other costs, but the trial court rejected the USPTO’s request, finding that such fees are “authorized only when there is a specific and explicit provision for the allowance of attorney’s fees under the selected statute.” Id. at 543.

The USPTO appealed to the Federal Circuit, which reversed the trial court, Nankwest, Inc. v. Matal  (Fed. Cir. 2017) 860 F.3d. 1352., concluding that “Given the Supreme Court’s construction of ‘expenses,’ the guidance dictionary and treatises provide on the term, and the context in which Congress applied it, we conclude the term ‘expenses’ includes the USPTO’s attorney’s fees under § 145.” Id. at 1358.  Two months later the entire Federal Circuit vacated the panel’s decision and set the matter for en banc review. So stay tuned on the final word from the Federal Circuit.

EVEN WHEN YOU WIN, YOU LOSE

In August of this year, in Booking.com B.V. v. Matal (E.D. Virginia 2017) 2017 WL 3425167 a trademark applicant appealed the USPTO’s refusal to register four trademark applications. The Court granted summary judgement for the applicant for two of the four marks and remanded consideration as to the other two marks back to the USPTO. Despite “losing” the appeal, the USPTO filed a motion for expenses, including its attorney’s fees.  In October, the court granted the USPTO’s attorney’s fees, 2017 WL 4853755. The Court noted that the issue was subject to en banc review by the Federal Circuit, but held that it was bound by Fourth Circuit precedent that “compels the Court to find that [the USPTO’s] attorneys’ fees are recoverable under §1071(b)(3).”

Ultimately it appears the Supreme Court will need to determine whether the statutory term “expenses” includes the USPTO’s attorneys’ fees. Until then, to quote the Grateful Dead, trademark and patent applicants “can’t win for losing.”

Beloved burger chain In-N-Out Burger, home of not-so-secret menu items and “animal style” fries, has sued burger competitor Smashburger, claiming that Smashburger’s new “Triple Double” burger infringes on In-N-Out’s “Double-Double” and “Triple Triple” trademarks.

Burger aficionados and dabblers alike are probably well-aware of In-N-Out’s “Double-Double” burgers, which come with two meat patties and two slices of cheese.  According to In-N-Out’s complaint, Smashburger recently began marketing a “Triple Double” burger, which contains two meat patties and three slices of cheese.  In-N-Out alleges that it has had registered trademarks on the mark “Double-Double” since 1975, and “Triple Triple” since 1990 – and further, its customers frequently mix and match the terms to create customized orders, including a “Triple Double.”  Smashburger apparently filed applications with the USPTO in November 2016 to trademark the term “Triple Double.”

In-N-Out claims that Smashburger’s use of the mark “Triple Double” has damaged In-N-Out because consumers are and will be confused and misled into believing that In-N-Out is somehow affiliated with Smashburger, and In-N-Out will suffer injuries to its reputation and goodwill.  Both burger chains have locations in southern California, where In-N-Out’s lawsuit was filed.

If the case were to go to trial, prospective jurors should consider demanding a blind taste test to determine whether there is, in fact, a likelihood of confusion between In-N-Out’s Double-Double and Smashburger’s Triple Double.

[Note: A previous version of this article ran on Wendel Rosen’s cannabis industry blog at www.calcannabislawblog.com on June 8, 2017.]

In June 2017, the California Assembly passed California AB 64, an omnibus bill regarding medical and recreational marijuana, and the bill is currently working its way through the California Senate committee process.

Federal cannabis trademark registration appears unlikely for the foreseeable future. The California cannabis industry and intellectual property lawyers are anticipating a trademark filing frenzy on January 1, 2018, when the California Secretary of State is scheduled to begin accepting trademark applications for cannabis goods and services.

California Currently Follows Federal Lead on Cannabis Trademarks

Under current law, the California Secretary of State will only register marks that are “substantially consistent with the federal system of trademark registration and protection under the Trademark Act of 1946 (15 U.S.C. §1051 et seq.) as amended.  To that end, the construction given the federal act should be examined as non-binding authority for interpreting and construing this chapter.” Cal. Bus. & Prof. Code §14272.

The United States Patent and Trademark Office (“USPTO”) will only register trademarks relating to commerce “which may lawfully be regulated by Congress.” 15 U.S.C. §1127, and specifically the USPTO requires that “use of a mark in commerce must be lawful use to be the basis for federal registration of the mark.”  Trademark Manual of Examining Procedure §907.

AB 64 Untethers California from the USPTO Limitations

The Legislative Analyst’s Digest for AB 64 identifies the conflict between California and Federal law relating to marijuana’s legality, and clarifies AB 64’s intended effect on marijuana trademarks:

(6) Existing law, the Model State Trademark Law, provides for the registration of trademarks and service marks with the Secretary of State and requires the classification of goods and services for those purposes to conform to the classifications adopted by the United States Patent and Trademark Office.

This bill, for purposes of marks for which a certificate of registration is issued on or after January 1, 2018, would, notwithstanding those provisions, authorize the use of specified classifications for marks related to cannabis, including medicinal cannabis goods and services that are lawfully in commerce under state law in the State of California.  (Emphasis added).

Specifically, Section 2(a) of AB 64 adds Section 14235.5 to the Business and Professions Code, which will establish two new cannabis trademark and service mark classifications:

Classification “500 for goods that are cannabis or cannabis products, including medicinal cannabis or medicinal cannabis products;” and

Classification “501 for services related to cannabis or cannabis products, including medicinal cannabis or medicinal cannabis products.”

Countdown to January 1, 2018

In plain English, on January 1, 2018, cannabis businesses will finally be able to register trademarks and service marks for cannabis goods and services, including trademarks for specific cannabis strains, assuming the proposed marks satisfy the other registration requirements (i.e. distinctiveness, lack of likelihood of confusion with existing registered marks, etc.)

Given that California is the most populous state, that the California cannabis market is projected to reach $6.5 billion by 2020, and that it is currently impossible to obtain a nationwide trademark for cannabis products, the California Secretary of State should anticipate receiving a tsunami of cannabis related trademark applications on January 2, 2018 (January 1 is an official State holiday).

Unlike the USPTO, which does not require an applicant to have used a mark in order to file an application (though proof of use is eventually needed for registration), California requires proof of actual use in commerce to file and register a trademark.  Cal. Bus. & Prof. Code 14202(h).  While existing cannabis trademarks already used in California may  already have common law trademark protection, registration with the Secretary of State would confer statewide rights and additional remedies.  Therefore, smart cannabusinesses should begin finding and using marks that will ultimately qualify for well in advance of the January registration date.

* A Californian cannabusiness would have zero chance of obtaining Acapulco Gold trademark because it would be geographically misleading and because the strain’s name is already widely used.

[This post is part 3 of a 3 part IP Basics Series]

In a recent series of IP Basics: Copyrights, Trademarks and Trade Secrets, Oh My! and What are “Trade Dress” and “Trade Secrets?”, we considered a number of different types of intellectual property (IP).  In this post, we will discuss those ubiquitous IP related symbols we see on products (and other works) and what they really mean.

The Copyright Symbol.  Use of the copyright symbol Ⓒ is regulated by federal copyright law.  For works first published after March 1, 1989, a formal copyright notice is optional.  17 U.S.C.A. § 401(a).  There are several formats for this notice proscribed by federal statute.  Federal law specifies that the notice may be in any one of the following forms:  (1) the symbol Ⓒ (the letter C in a circle), (2) the word “Copyright” or (3) the abbreviation “Copr.”  17 U.S.C.A. § 401(b)(1).

While not required, including a copyright notice on a published work can negate an infringer’s ability to rely on the “innocent infringement” defense to avoid the imposition of certain damages.  17 U.S.C.A. §§ 401(d) and 402(d).

A copyright notice was required for works published before March 1, 1989 (the effective date, as to the United States, of the international copyright treaty known as the Berne Convention).  General publication before that date without a copyright notice could cause a work to enter the public domain if the copyright owner failed to cure the omission of the mandatory copyright notice.  There are, however, some limited circumstances in which the omission of the copyright notice from authorized copies distributed by the copyright owner does not invalidate the copyright in a work.  For example, a copyright is not lost if an otherwise required copyright notice was left off in violation of an express written requirement contained in the owner’s authorization of the public distribution of the work.  17 U.S.C.A. § 405(a)(3).

The Trademark Symbol.  Where a trademark is not registered, those claiming a protectable trademark or servicemark can make use of the “TM” and “SM” symbols.   The former signals a claimed trademark, while the latter is used with servicemarks (a servicemark is a trademark used to identify a service rather than a product).  No specific federal statutes authorize the use of the “TM” symbol, limits its use, or states definitively what it does or does not convey to the public.  Southern Snow Manufacturing Co. v. Snow Wizard Holdings, Inc. (E.D. La. 2011) 829 F.Supp.2d 437, 452 (“Southern Snow”).  Historically, however, the designation has been used as a way of alerting the public to a claim of ownership of a trademark.  Southern Snow, at p. 452.  Such a claim does not necessarily equate with any actual, protectable rights.  “…[T]he TM symbol does not mean that the party has trademark rights in the name or can ensure that the mark is capable of serving as a trademark…”  Southern Snow, at p. 453-454.

However, using the “TM” and “SM” symbols can help establish a trademark.  The courts may consider such use as evidence demonstrating that a name or mark is being used in the sense of a trademark or servicemark to reflect the origin of the goods or services, a factor in the overall determination of the existence of trademark protection.  The fact that no symbol is used to designate an alleged trademark is evidence that the mark is not being used as a trademark.  T.A.D. Avanti, Inc. v. Phone-Mate, Inc. (C.D. Cal. 1978) 1978 WL 21444, *6.

Since 1946, when the Lanham Act was enacted, the United States Patent and Trademark Office (USPTO) has denied registration of any trademark that “[c]onsists of … matter which may disparage [any] persons living or dead….” Today, the Supreme Court struck down this “disparagement clause,” finding that it violated the First Amendment.

Oregon Rock Band Blazes New Law

For seventy years, the USPTO relied on the disparagement clause to reject trademarks that were racially or ethnically offensive, but The Slants, a rock band from Portland, Oregon changed the law. The Slants’ lead singer, Simon Tam, sought to trademark the band’s name, seeking to reclaim the term by their “deliberate disarmament of toxic language and symbols.” (See The Slants’ Press Release on Tam Decision.)

The USPTO refused to register “The Slants,” citing the disparagement clause. Tam appealed to the Federal Circuit, which held that Section 2(a) was unconstitutional restraint of free speech under the First Amendment.

The USPTO Strikes Out

The Supreme Court granted certiorari, and today, Justice Alito issued the Court’s opinion holding that the disparagement clause “violates the Free Speech Clause of the First Amendment.”

The Court rejected three USPTO arguments: “(1) that trademarks are government speech, not private speech, (2) that trademarks are a form of government subsidy, and (3) that the constitutionality of the disparagement clause should be tested under a new ‘government-program’ doctrine.”

Because “[t]he Federal Government does not dream up these marks, and it does not edit marks submitted for registration” “it is far-fetched to suggest that the content of a registered mark is government speech.”

Next the Court rejected the USPTO’s argument regarding the “constitutionality of governmental programs that subsidize speech expressing a particular viewpoint.” The Court distinguished those cases because they “involved cash subsidies or their equivalent.”

The Court rejected the USPTO’s position that the trademark registration program “creates a limited public forum for private speech” because even in such cases “viewpoint discrimination is forbidden.”

Finally, the Court found that the disparagement clause fails even the relaxed First Amendment scrutiny applied to commercial speech. Citing the government interests of “encouraging racial tolerance” and “protecting the orderly flow of commerce,” the Court found that disparagement clause was not narrowly drawn and was therefore unconstitutional.

But What About the Washington Redskins?

The USPTO had deregistered the Washington Redskins’ trademark based on the disparagement clause. The team had appealed the USPTO’s decision, and the appeal is pending in the 4^th Circuit.  Today’s Tam decision will knock the legs out from the USPTO’s decision and should pave the way for the team to reclaim its trademark.

What About Section 2(a)’S Other Prohibitions?

Section 2(a) also precludes registration of any trademark that “consists or comprises immoral, deceptive or scandalous matter….” Presumably, the Court’s Tam decision will also preclude the USPTO from denying registration to marks that are immoral or scandalous. However, one would assume the prohibition on deceptive marks would survive, since it is consistent with other provisions in the Lanham Act precluding “deceptively misdescriptive” marks and marks that are “likely …to deceive.”

[This post originally ran on our sister blog the California Cannabis Law Blog on June 8, 2017.]

Last week the California Assembly passed Assembly Bill 64 (AB 64), an omnibus bill regarding medical and recreational marijuana, sending it to the State Senate for review.

Federal cannabis trademark registration appears unlikely under the current administration. The California cannabis industry and intellectual property lawyers are anticipating a trademark filing frenzy on January 1, 2018, when the California Secretary of State is scheduled to begin accepting trademark applications for cannabis goods and services.

Current Status: California Follows Federal Lead — No Cannabis Trademarks

Currently, the California Secretary of State will only register marks that are “substantially consistent with the federal system of trademark registration and protection under the Trademark Act of 1946 (15 U.S.C. §1051 et seq.) as amended. To that end, the construction given the federal act should be examined as non-binding authority for interpreting and construing this chapter.” Cal. Bus. & Prof. Code §14272.

The United States Patent and Trademark Office (USPTO) will only register trademarks relating to commerce “which may lawfully be regulated by Congress.” 15 U.S.C. §1127, and specifically the USPTO, requires that “use of a mark in commerce must be lawful use to be the basis for federal registration of the mark.” Trademark Manual of Examining Procedure §907.

AB 64 Untethers California from the USPTO Limitations

The Legislative Analyst’s Digest for AB 64 identifies the conflict between California and Federal law relating to marijuana’s legality and clarifies AB 64’s intended effect on marijuana trademarks:

(6) Existing law, the Model State Trademark Law, provides for the registration of trademarks and service marks with the Secretary of State and requires the classification of goods and services for those purposes to conform to the classifications adopted by the United States Patent and Trademark Office.

This bill, for purposes of marks for which a certificate of registration is issued on or after January 1, 2018, would, notwithstanding those provisions, authorize the use of specified classifications for marks related to medical cannabis and nonmedical cannabis goods and services that are lawfully in commerce under state law in the State of California. (Emphasis added).

Specifically, Section 2(a) of AB 64 adds Section 14235.5 to the Business and Professions Code, which will establish two new cannabis trademark and service mark classifications:

Classification “500 for goods that are medical cannabis, medical cannabis products, nonmedical cannabis, or nonmedical cannabis products;” and

Classification “501 for services related to medical cannabis, medical cannabis products, nonmedical cannabis, or nonmedical cannabis products.”

Countdown to January 1, 2018

In plain English, on January 1, 2018, cannabis businesses will finally be able to register trademarks and service marks for cannabis goods and services, including trademarks for specific cannabis strains, assuming the proposed marks satisfy the other registration requirements (i.e., distinctiveness, lack of likelihood of confusion with existing registered marks, etc.).

Given that California is the most populous state, that the California cannabis market is projected to reach $6.5 billion by 2020, and that it is currently impossible to obtain a nationwide trademark for cannabis products, the California Secretary of State may be overwhelmed with cannabis related trademark applications on January 2, 2018 (January 1 is an official  State holiday).

Unlike the USPTO, which does not require an applicant’s prior use of a mark to file an application (though proof of use is eventually needed for registration), California requires proof of actual use in commerce to file and register a trademark. Cal. Bus. & Prof. Code 14202(h). While existing cannabis trademarks already used in California may currently have common law trademark protection, registration with the Secretary of State will confer statewide rights and additional remedies.

Smart cannabusinesses should begin finding and using marks that will ultimately qualify for trademark registration well in advance of the January registration date.

* A Californian cannabusiness would have zero chance of obtaining Acapulco Gold trademark because it would be geographically misleading and because the strain is already widely used.

A lot happened in 2016. The first thing that comes to my mind as the unexpected event of 2016 is Alaska Airlines’ acquisition of Virgin America. At first glance, Alaska and Virgin didn’t seem to  have that much in common. Alaska is the introvert: it’s a well-established airline that likes to stay close to home on the West Coast. Virgin is the fun, upstart newcomer that likes to explore new places around the country. With the acquisition, Alaska will now be able to tap into Virgin’s loyal customer base all throughout the United States.

Although Alaska completed its acquisition of Virgin in December 2016, there were no immediate, significant changes to either of the airlines. However, last week, Alaska Airlines announced that it intended to retire the Virgin America name and logo in 2019. Presumably, the entirety of the Virgin America brand – color schemes, uniforms, in-flight entertainment, frequent flyer program, and everything else, will be phased out as well. Alaska intends to implement new flight attendant uniforms and a redesigned cabin interior would be introduced to all its flights in the next few years.

What’s going to happen to Virgin America’s registered trademarks and servicemarks? Under federal law, a mark is deemed to be abandoned if its use has been discontinued (generally for at least 3 consecutive years) and there is intent not to resume its use. The owner of an abandoned mark won’t be able to protect against use of the mark by others. This means that third parties can use the mark, or even register the mark for themselves.

In Virgin America’s case, Alaska has already publicly expressed its intention to retire the Virgin America name and logo. While the term “retirement” may be thrown around loosely by some (see e.g. Jay-Z, Barbara Streisand and Michael Jordan), in this context, it seems synonymous with abandonment. Alaska’s announcement suggests that it will discontinue all use of the Virgin America marks by 2019 as part of its comprehensive rebranding process. If the Virgin America marks are deemed “abandoned,” it opens up the possibility for other parties (or Virgin America’s founder, Sir Richard Branson) to use and register the Virgin America marks – or maybe even start a new Virgin America airline.¹ While Virgin America, the company, may no longer be around, its marks may live on.

¹ Although third-party use of an abandoned “Virgin America” mark could infringe upon other Virgin marks still owned by Branson or his holding company, Branson himself could potentially revive the Virgin America brand, depending on the terms of the Alaska/Virgin buyout agreement.

Could you write a legal opinion about Jimmy Buffett, Margaritaville and Marijaunaville without displaying any trace of a sense of humor? The United States Patent and Trademark Office (USPTO) did. The USPTO wrote a 30-page opinion about the singer, who’s backed by the Coral Reefer Band and has created “an island escapism lifestyle,” without a single pun, witticism or joke that might elicit even a smirk, much less a smile.

Rachel Bevis, the applicant, sought to register the trademark MARIJUANAVILLE for a variety of types of clothing to be sold in locations that support the legalization of marijuana. Jimmy Buffett’s company Margaritaville Enterprises, LLC filed an opposition, citing its use of the MARGARITAVILLE mark on a number of products, including clothing.

The USPTO applied the 12 DuPont factors, used for determining the likelihood of confusion between the applicant’s mark [MARIJUANAVILLE] and the existing mark [MARGARITAVILLE].

The USPTO reviewed Buffett’s epic career and his widespread “media and popular culture exposure” and concluded, in a gross understatement, that Margaritaville has established that its mark is “famous.”

Margaritaville enlisted an expert lexicographer and linguistic consultant to state the obvious, that “due to the shared linguistic properties of the two terms Margaritaville and Marijuanaville …are similar and may result in consumer confusion.” Apparently Margaritaville’s money was not well spent as the USPTO refused to rely on such testimony noting that “opinion testimony on the questions of likelihood of confusion is admissible, it is entitled to little or no weight.” With all the groove of a blown flip-flop, the USPTO conducted its own comparison and found:

[B]oth marks are similar insofar as they are  comparing the two “single term 14 letter marks comprises of five syllables, each commencing with the same letter string “mar-” and ending with the suffix “-ville.” As to their connotation and commercial impression, the record shows a public association between the two terms as representing a similar “state of mind” induced by either a cocktail or marijuana. According to the record, the suffix “-ville” is a slang term frequently combined with other words to denote a “state of being.”

The USPTO made no mention of the fact that marijuana is a Schedule 1 Controlled Substance and that the USPTO will not register trademarks for actual marijuana use. In fact, the USPTO has registered numerous trademarks for clothing and other goods and services that relate to marijuana or cannabis, so long as the goods and services do not relate directly to the sale of marijuana.

The USPTO sustained Margaritaville’s opposition and denied registration to MARIJUANAVILLE, concluding that “thus, the overall connotation and commercial impression of the marks is highly similar – a chemically induced mental paradise. The public is likely to perceive Applicant’s mark [MARIJAUNAVILLE] as an extension of Opposer’s lifestyle brand [MARGARITAVILLE]”

One can only hope that after this ordeal, Jimmy Buffett, the applicant, and maybe even the USPTO Judge, were able to chill on a beach somewhere, watchin’ the sun bake and get to their own “states of being.”

In one corner, you have the 19-year-old breakout star of the Kardashian/Jenner clan, Kylie Jenner, who is making a name for herself with her cosmetics and fashion empire. In the other corner, you have the 48-year-old singer, songwriter, dancer and actress, Kylie Minogue, best known for her song “Can’t Get You Out of My Head.”

In an effort to expand her empire, Kylie Jenner, Inc. filed a trademark application on April 1, 2015, to register the mark KYLIE for “Advertising services, namely, promoting the brands, goods and services of others; endorsement services, namely, promoting the goods and services of others.” Although Ms. Jenner’s trademark application was approved for publication on August 25, 2015, world-renowned pop star Kylie Minogue filed a Notice of Opposition before the Trademark Trial and Appeal Board, on February 22, 2016, based on the following grounds: 1) priority and likelihood of confusion, 2) dilution by blurring and 3) dilution by tarnishment. Ms. Minogue also cites her various registrations and applications for the following marks: KYLIE, KYLIE MINOGUE, KYLIE MINOGUE DARLING, and LUCKY – THE KYLIE MINOGUE MUSICAL.

In support of her Opposition, Ms. Minogue was self-described as an “internationally renowned performing artist, humanitarian, and breast cancer activist” who “has been in the entertainment industry since 1979,” while Ms. Jenner was described as “a 2015 home-schooled graduate of Laurel Springs School in Ojai, California” and “a secondary reality television personality who appeared on the television series ‘Keeping Up With the Kardashians’ as a supporting character.”

Just as tabloid readers and IP nerds were settling in for an epic battle, it appears the Kylies have settled this matter amicability given that Ms. Minogue withdrew her Opposition on January 19, 2017, and the matter was terminated on January 26, 2017.  Such settlements can involve payments, transfers of trademarks and/or coexistence agreements where the parties agree not to compete with each other. In this instance, Ms. Jenner might have agreed not to use KYLIE to fund raise for humanitarian causes, and Ms. Minogue might have agreed not to use KYLIE to launch a makeup line. In any event, the Kylies are stepping away to their respective corners.