The Battle of the Kylies Over the “Kylie” TrademarkMar 24, 2017 Fashion Industry
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.