The importance of vigilant trade mark protection
What can you do to protect your brand?
In August 2015 Kylie Jenner, who has become a household name through appearances in modelling and reality television, applied through the United States Patent and Trade mark Office (USPTO) to register her ownership of the name 'Kylie' for advertising purposes. This trade mark was disputed by KBD, the business representatives of Australian musician, Kylie Minogue.
Whilst trade mark law in the United States generally favours the rights of the first owner of a trade mark in use, the USPTO also requires that to dispute the registration of a trade mark a party must prove that it owns a valid trade mark, that their rights to the trade mark are superior, and that the any infringements or potential infringements are likely to confuse consumers about the source of that trade mark's sponsorship.
The 'Kylie' trade mark application was opposed on the grounds that it would confuse fans of Minogue, and had the potential to harm Minogue's brand in circumstances where she has been renown for being simply 'Kylie' throughout her career. This is evidenced by her 1988 debut album 'Kylie', and her website 'www.kylie.com'.
Whilst it is clear that Minogue has used the title under dispute throughout her career, the USPTO will have to make a determination based not only on the past use of the mark, but on whether consumers are likely to confuse products released by Jenner with those released by Minogue should the trade mark be registered. As Jenner maintains a large media presence distinct from Minogue, it will be interesting to see who will be successful in the proceedings.
In February 2016 Jenner applied for an additional trade mark on the name 'Kylie' for use in entertainment. Further information regarding whether Minogue intends to dispute the second application or the outcome of the existing dispute are not known.
The above example illustrates the importance of being vigilant as an owner of a registered trade mark. All trade mark owners should keep track of any new applications for the same or similar trade mark. It is definitely easier to oppose a pending application than it is to remove a registered trade mark.
Also, you should ensure you are consistently using your trade mark as registered and in respect of your registered goods and services. Failing to use your registered trade mark not only exposes your trade mark to a removal application but also decreases your ability to show that use of a competing brand would be likely to cause confusion.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.