Since celebrities realized that they could capitalize on their names and personas, they have tried to cultivate, protect, and display certain images that are associated with them. While this is not a new practice, trademarking one’s own name is. Kylie Jenner, an affluent 18-year-old socialite who has created an empire of products and appearances based on her image, has sought trademark protection of her first name. Kylie Minogue, an Australian singer, songwriter, and actress, has filed a notice of opposition to Kylie Jenner’s application. Two well-known stars are now fighting over the rights to a somewhat-common name, Kylie.

Can People Trademark Their Name?

In short, yes they can. If an individual wants to protect a name, then the individual only needs to prove that the term has gained secondary meaning. Secondary meaning is the ability for consumers to recognize a mark in connection with a specific company or person. Kylie Jenner, without doubt, has established meaning to her full name and anything associated with it. But has she created enough consumer recognition with just the name “Kylie?”

According to Kylie Minogue, the answer is no. Kylie Minogue has created an empire of her own in Australia and worldwide since the late 70’s, and already has rights to many trademarks of her own. Last month, Minogue filed an opposition to the United States Patent and Trademark Office (USPTO) stating that Jenner should not be given rights to the mark “Kylie.”

What is an Opposition?

After the USPTO has allowed a trademark, the office will publish the mark and allow others the chance to oppose the mark if they have substantial reason. In the opposition, Minogue claims that there would be a likelihood of confusion with her own mark “KYLIE” and that she has rights of first use. As supporting reason, the opposition goes on to call Jenner a “supporting character” on Keeping Up With the Kardashians and bolsters Minogue’s own recognition among the consuming public. The UPSTO will examine Minogue’s claims for any merit and rule accordingly. If either side is displeased with the ruling, it is likely to be appealed and taken to court.

Doesn’t Right of Publicity Protect This?

Right of publicity, or personality rights, is the right of an individual to control the commercial component of his or her image, name, likeness, or unequivocal aspects of their identity. Protections are given to individuals who have created some sort of feature or recognition of themselves through these rights of publicity. However, both Kylies have approached this from a more extreme position. Because the name “Kylie” could mean anyone, both of these celebrities desired extra protection against others who wish to ride on the weight that their names have garnered. By gaining this new level of protection, both Minogue and Jenner will be protected from infringement on a greater level than the right of publicity usually offers.

Jenner and Minogue are only a few of many celebrities who are attempting to trademark their names and phrases. Donald Trump’s “You’re fired,” Beyonce’s attempt to trademark her daughter’s name “Blue Ivy,” and Emeril Lagasse’s “BAM!” are only a few examples of celebrities attempting to protect their brand. As the USPTO examines Minogue’s opposition, many fans have weighed in on the issue in hopes of aiding their favorite celebrity.

If you have questions about trademark protections, Revision Legal can help. Get in touch with us online or by calling 855 473 8474.

Image credit to Flickr user Eva Rinaldi.

How the Kylie v. Kylie Opposition Resolved

The Trademark Trial and Appeal Board (TTAB) proceedings in Minogue v. Jenner, Opposition No. 91226456, ultimately resolved in a way that reflects a broader truth about personal name trademark disputes: they rarely produce clear winners. Jenner abandoned multiple KYLIE trademark applications, and Minogue retained her preexisting KYLIE trademark registrations. The result was a practical settlement of the dispute rather than a definitive ruling on who “owns” the name Kylie in commerce.

That outcome illustrates an important principle for anyone seeking to trademark their personal name: first use in commerce matters enormously, and international scope matters. Minogue had been using KYLIE in commerce since the late 1980s and had trademark registrations in multiple countries predating Jenner’s applications by decades. That priority — in time, in geographic breadth, and in consumer recognition — was the foundation of her opposition.

The Legal Framework for Personal Name Trademarks

Under the Lanham Act, 15 U.S.C. § 1052, a mark that is “primarily merely a surname” is not registrable on the Principal Register without proof of acquired distinctiveness — what trademark law calls “secondary meaning.” The term “Kylie” presents a somewhat different analysis because while it is a given name, it is not primarily a surname. Given names can be registered as trademarks, but the applicant must demonstrate that consumers associate the name with a specific commercial source — i.e., that the name functions as a brand identifier, not merely as a personal name.

For a celebrity seeking to register her first name, the question is whether consumers who see the name “Kylie” on beauty products understand it to mean products associated with a specific celebrity’s brand, or whether they might associate it with any of the many other people named Kylie who might sell products under that name. The answer is inevitably fact-specific and depends on the celebrity’s fame, the channels of trade, and the goods involved.

The TTAB’s likelihood of confusion analysis under the du Pont factors — drawn from In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973) — considers whether consumers would be confused about the source of goods bearing similar marks. Where two parties use the same mark for related goods and target similar consumers, confusion is likely. The difficulty in the Kylie case was that both applicant and opposer have significant consumer recognition under the same name in overlapping categories of goods.

The Role of Fame in Personal Name Trademark Disputes

Trademark fame plays a dual role in personal name disputes. First, it is relevant to the likelihood of confusion analysis — a famous mark is entitled to broad protection and is more likely to be confused with similar marks across a wider range of goods and services. Second, under the Federal Trademark Dilution Act (FTDA), 15 U.S.C. § 1125(c), the owner of a famous mark can prevent uses that dilute the mark’s distinctiveness or tarnish its reputation, even without likelihood of confusion.

For personal name marks, fame is built through commercial use, advertising, and consumer recognition — not through celebrity status per se. A person can be enormously famous and yet have a personal name that is not a famous trademark if they have not used the name to identify commercial goods or services in a consistent, source-identifying way. Conversely, a brand built on a name — like Gucci, Chanel, or Versace — can be a famous trademark even after the original name holder is deceased, because consumers associate the name with the brand, not the person.

Right of Publicity vs. Trademark: Different Protections for Different Purposes

The distinction between trademark rights and right of publicity rights is important and often misunderstood. Right of publicity protects an individual’s interest in controlling the commercial use of their name, image, likeness, and other indicia of identity. It is a state law right, available in approximately 35 states, and it protects against unauthorized commercial exploitation by third parties — for example, using a celebrity’s name or image in an advertisement without permission.

Trademark rights, by contrast, protect consumers from confusion about the source of goods and services. A trademark in a personal name prevents others from using that name in commerce in a way that confuses consumers about whether those goods come from or are endorsed by the trademark owner. The two types of rights overlap but are not identical: right of publicity protects the individual against unauthorized use; trademark protects the commercial brand against confusion, even by someone who never intended to trade on the celebrity’s reputation.

For a celebrity with a developed commercial brand, both types of protection are valuable and complementary. Right of publicity provides a broad tool against unauthorized use of name and likeness. Trademark provides the ability to enforce against competitors who use similar names for similar goods, even when the competitor is not specifically targeting the celebrity’s consumer base.

Common Mistakes in Personal Name Trademark Applications

The Kylie dispute illustrates several mistakes that applicants for personal name trademarks commonly make:

• Applying without a full clearance search. A comprehensive trademark clearance search would have revealed Minogue’s preexisting KYLIE registrations before Jenner’s application was filed. Discovering a senior user during opposition proceedings is more expensive and damaging than discovering one during pre-filing due diligence.
• Seeking registration of a first name alone rather than a distinctive brand name. A registration for KYLIE alone is inherently narrower and more vulnerable to challenge than a registration for a stylized version of the name, a distinctive combination (KYLIE COSMETICS), or a unique design incorporating the name. Distinguishing the mark from the name’s dictionary meaning strengthens the application.
• Failing to build the trademark record before applying. Using a mark in commerce before applying — and documenting that use carefully — strengthens the evidence of acquired distinctiveness. Applications filed before commercial use has been established rely on an intent-to-use basis, which extends the timeline and creates exposure to intervening uses.

Talk to an Attorney

Personal name trademark applications require careful pre-filing clearance searches, strategic identification of goods and services, and in some cases coordination with right of publicity counsel. Whether you are a public figure building a commercial brand or a business seeking to protect a company name that incorporates a founder’s name, Revision Legal’s trademark attorneys can guide you through the process. Contact us online or by calling 855-473-8474.