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
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
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.
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The Ugg boots case revolves around who holds the trade mark rights to the word 'Ugg' in relation to sheepskin boots.
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