Will the real Kylie please stand up? Of course, both Kylie Minogue and Kylie Jenner are real Kylies and both have the right to use their names. But the problem centers on the fact that both are not ordinary individuals and that they are using their names for commercial purposes.
Kylie Minogue is an accomplished Australian pop star and actress with a career that has spanned three decades. She is famous across the globe with worldwide record sales of more than 80 million and several accolades under her belt including a Grammy, several BRIT awards, and honorary titles and decorations.
Outside her music and acting career, Minogue is also a book author and a philanthropist. She also has her own fashion line, merchandise, and a range of homeware products named after her.
The younger Kylie Jenner is relatively a newcomer. She is the daughter of Kris and Caitlyn Jenner, sister of Kendall, and half-sister to the Kardashian clan. The reality TV show “Keeping Up With The Kardashians” undoubtedly catapulted her to popularity.
With an established public image and legion of followers, Jenner has successfully entered the fashion industry as a model and endorser. She has also launched several clothing and fashion lines, including cosmetics and personal care products.
“Kylie” As A Personal Brand of Kylie Minogue and Kylie Jenner
Both Minogue and Jenner are undoubtedly popular in their own rights. Their status as public personalities command a sizeable following and their names generate a recall similar to the recalls stirred by established products and companies. Both Kylies are personal brands nonetheless.
As a backgrounder, personal branding is the practice of people marketing themselves and their careers as brands. It is also a concept that suggests success comes not only from self-improvement but also from self-packaging using principles and practices borrowed from the field of marketing. This is akin to the commodification of names and persona.
Common in personal branding is the application of a name to various products. Think of real-estate mogul Donald Trump and his Trump Tower as an example. Both Kylies have done the same thing. Minogue and Jenner have ascribed their names in various commodities and services to create brand awareness and loyalty by exploiting their established personas.
In personal branding, the sizeable followings of Minogue and Jenner are convertible to customer bases. Products that would carry their name would easily appeal to these fans. Apart from this, however, the fact that both have established a reputation means people would easily associate their names with reliability. Their names are nonetheless an effective marketing tool to promote products that are associated with their careers and personalities.
Minogue has been generating sales for her perfume brand called Kylie Minogue Darling. Jenner has also been building her entrepreneurial career from her Kylie-branded fashion items. Their personally-branded products are generating a considerable amount of consumer interest and sales.
Minogue vs. Jenner: Competing for the “Kylie” Trademark
Kylie Jenner applied for a trademark in the United States for the word “Kylie” in 2014 through her company Kylie Jenner Inc. The application cites trademark class 35, which covers advertising services, including advertising brands, goods, and the services of others and endorsing or promoting the goods and services of others.
However, through her KDB Pty. Ltd. company, Kylie Minogue filed a notice of opposition on 22 February 2016 to challenge the application of Jenner. Her argument states that registering the “Kylie” trademark under Jenner would cause confusion and dilution.
KDB has used the trademarks “Kylie Minogue Darling” in relation to fragrance and cosmetic products, “Kylie” in relation to education and entertainment purposes, “Kylie” in relation to music recordings and pre-recorded optical discs featuring video clips, and “Kylie” in relation to bracelets, necklaces, and other fashion accessories.
The notice also cited the accomplishments of Minogue as an international pop singer and actress, as well as a humanitarian and breast cancer activist. It also argues that Jenner is nothing more than a secondary reality television personality because she was a mere supporting actress in a reality TV show top-billed by her half-sisters.
Another interesting part of the notice is that it cited the shortcomings of Jenner, particularly her photographic exhibitionism and controversial statements made on social media that have attracted criticisms from disability rights groups and African-American communities.
Based on the notice of opposition, Minogue is using the prior use and registrations of her trademarks to oppose the application of Jenner. Relying on legally-established and time-proven names or similar signs can be crucial in legal battles involving similar trademarks.
The Australian celebrity also built her case around the longevity of her name and the images that have been associated with it. Granting Jenner the right to the trademark would undermine these accomplishments that Minogue built for the last three decades.
Arguments and Counterarguments Regarding Trademark Ownership
This trademark battle between the two high-profile Kylies was regarded as an important example of an intellectual property dispute. Take note that the United States PTO defines a trademark as “any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others.” In addition, a trademark is not descriptive of a product or service but a tool for identifying the source or manufacturer.
This trademark battle is an interesting issue related to intellectual properties and commerce laws. For her to prevent Jenner from owning the trademark, Minogue would need to prove that the granting of the application would indeed cause confusion among consumers and dilute her brand.
By citing prior uses of the “Kylie” trademarks, Minogue believed granting Jenner the trademark would confuse consumers by making them believe that all Kylie-branded products or services from the younger Kylie are connected to her. There was a strong case for this argument because it is likely that there is an overlap between the legions of fans of each celebrity. It is also worth highlighting that some of the personally-branded products of Minogue and Jenner are very similar—from fashion items to perfumes and cosmetics.
If Minogue was unable to provide strong evidence for confusion, she could resort to proving dilution. Central to the concept of dilution is the need to provide extra protection for well-established or famous brands. Dilution essentially protects the established attractiveness of the product or service and its brand from being tarnished due to poor association.
Minogue tried to do this by citing the fact that she has a more established career and socially significant legacies than Jenner. She also cited the controversies involving Jenner to further undermine the trademark application.
Both confusion and dilution are the reason why trademark law is in place. This law essentially helps consumers to distinguish products or services of a business from those of competitors, thus allowing them to make buying decisions based on the established and associated images and reputation.
Trademark also protects the investment of its owner as its reputation and credibility. Both Minogue and Jenner are nonetheless protecting the possible revenues that could be generated by their personal brands. In the case of Minogue, she is protecting the marketability of something that has been established for decades.
Nevertheless, there is now a clear winner as of 2018. The real “Kylie” is no other than Kylie Minogue, of course, as far as the trademark is concerned. The United States PTO rejected the claim of Jenner, thereby giving the Australian pop celebrity the right to use the trademark.
