March 07, 2016

KYLIE Who? Minogue and Kardashian Claim Rights to KYLIE

by Stites & Harbison, PLLC

Two B-list celebrities are battling for rights in the mark KYLIE. Kylie Jenner filed applications to register the mark KYLIE in connection with a large number of goods and services, and, last week, Kylie Minogue has opposed registration to Kylie Jenner's registration of "advertising services, namely, promoting the brands, goods and services of others; endorsement services, namely, promoting the goods and services of others." You're probably familiar with Kylie Jenner. These days, how could you not be? Jenner is the up and coming fashion model and younger sister of Kim Kardashian who frequently sports some variant of turquoise hair.

Kylie Jenner

Minogue, on the other hand, required some Googling. As it turns out, she sang the Loco-Motion back in the 1980's:


Minogue filed a notice of opposition to Kardashian's registration of KYLIE, claiming priority and that registration of Kardashian's mark would result in likelihood of confusion and both dilution by blurring and dilution by tarnishment. Dilution might be a bit overreaching. The first element of a dilution claim is that a mark is famous. I highly doubt that this one-hit-wonder can claim that 75% of the general consuming public recognize her mark and affiliate the mark KYLIE with Minogue.

Minogue has a registration for the mark KYLIE for a variety of uses, including, "Education and entertainment, Sound recordings, namely, music recordings; recording discs, namely, prerecorded audio discs featuring music and pre-recorded optical discs featuring music video clips and concerts; compact discs, namely, audio and video compact discs featuring music video clips, and musical recordings; and mobile telephone accessories, namely, wrist straps." Though the goods listed in Minogue's registrations don't overlap with the goods and services Jenner for which Jenner seeks to register KYLIE, the TTAB will have to decide if the goods are similar enough that consumers might be confused as to the source of the goods and services. The Examining Attorney obviously considered Minogue's registrations and didn't think it would be a problem.

Minogue might have a tough time opposing Jenner's registrations, particularly because she usually goes by two names rather than just one. Unlike artists such as Cher, Adele, and Madonna, Kylie Minogue's music has always been promoted under her full name. Stay tuned to see how this one unfolds.