©2016. Published in Landslide, Vol. 9, No. 2, November/December 2016, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
Rose is a rose is a rose.
What’s in a name? These days a lot. With the rise of the global lifestyle brand, celebrities are increasingly turning to trademark law to monetize their name recognition. Some celebrities have been gifted with brand-worthy names by forward-thinking parents (no pressure, but we’re looking at you to do fabulous things, Apple Martin), while some adopted a stage name to help craft their image (Norma Jeane Mortenson does not have the same ring as Marilyn Monroe). Regardless of how celebrities (or aspiring celebrities and Internet personalities) come upon their names, many are registering trademarks made up of their names.
How may I live without my name? I have given you my soul; leave me my name!
This article will address a recent clash between Kylie Ann Minogue, an Australian musician, and Kylie Jenner, an American reality TV star and model, over Jenner’s attempt to trademark the name “Kylie” in connection with her growing lifestyle brand, raises interesting questions about just how much trademark protection can be afforded to a personal name, whether and when such a trademark can be pursued, and where trademark counsel should be cautious.
This article will also consider the efforts of Taylor Swift to trademark her name and her song lyrics, as well as unremitting steps taken by Beyoncé and her husband Jay Z to prevent third parties from obtaining trademark rights in the name of their child, Blue Ivy Carter. The article will include a discussion of an unsuccessful initial attempt by the band LMFAO to trademark its name, and how the band fixed the issues with its application. Finally, it will conclude with some tips for trademark practitioners when filing trademark applications in personal names.
Trademark Law in the United States
Trademark law in the United States is governed by the Lanham (Trademark) Act of 19461 and the Rules of Practice in Trademark Cases.2 Under the Lanham Act, trademark protection attaches to words or symbols used to distinguish a good or service in commerce. Trademark law is used to protect consumers against confusion as to the source of goods or services they buy in commerce. A trademark has the potential to last indefinitely provided that the owner is making substantially continuous and exclusive use in commerce.
Caution When Filing Actual-Use vs. Intent-to-Use Applications
When filing a federal trademark application, the applicant can specify whether the proposed mark is being used in commerce by submitting an application based on section 1(a).3 Where the applicant intends to begin making use at a later date, he or she may submit an application based on section 1(b).4 Section 1(a) applications require a specimen evidencing the applicant’s use of the mark in connection with the goods and services in the application, and identifying a first use in commerce date. Where an applicant has a good faith bona fide intent5 to use a trademark, but has not begun doing so at the time the application is filed, a specimen is not necessary until such time that use in commerce has begun.
Trademark practitioners should be aware that filing an application with a false first use in commerce date may result in cancellation of the trademark after registration is granted. It could also be seen as an indication that the filing party was dishonest and could support an inference of bad faith.6 Accuracy of dates is important because an applicant will get the benefit of its application date or its first use in commerce date (as applicable) when determining the priority between potentially conflicting trademarks and applications. Honesty and accuracy before the United States Patent and Trademark Office (USPTO) is critical for attorneys because those appearing before it are subject to the USPTO Rules of Professional Conduct. These rules are based on the ABA Model Rules of Professional Conduct. Knowingly filing false information with the USPTO may also result in an ethics violation.7
Once an application is received, an USPTO examining attorney will review the application for any procedural issues and identify whether there are any conflicting applications or marks already filed with the USPTO. If the application survives this scrutiny, the mark will be published for opposition in the Trademark Official Gazette (TMOG) for 30 days. For an application based on section 1(b), if there are no third-party objections, a notice of allowance will issue granting the applicant six months to start using the mark in commerce or to request an extension of time to make use in connection with some or all of the goods and services set forth in the application. An applicant may request up to five extensions of six months each (three years total) to submit a specimen showing that the mark is in use in commerce.8
Trademarks in Personal Names
The Lanham Act allows a person to obtain a trademark registration in his or her personal name provided that the proposed mark meets certain criteria. When a personal name is used as a trademark, it is considered by the USPTO and the courts to be descriptive. Proof of secondary meaning or acquired distinctiveness is required for a personal name to be protectable as a trademark. Personal names (including both legal names and nicknames) registered with the USPTO must be used to identify goods and services to consumers. A mark that is “primarily merely a surname” is not federally registrable on the Principal Register without proof of such secondary meaning.9 Additionally, a name “identifying a particular living individual” cannot be registered as a trademark without written consent.10 Counsel for a party attempting to register a trademark in a personal name must be prepared to argue that the personal name is in fact being used in connection with the bona fide offering of goods and services.
Celebrity Trademark Disputes
Just Being “KYLIE”
In April 2015, Kylie Jenner, best known from Keeping Up with the Kardashians, submitted an intent-to-use application to the USPTO in International Class (IC) 035 for the mark KYLIE for “advertising services, namely, promoting the brands, goods and services of others; endorsement services, namely, promoting the goods and services of others.”11 The mark was published for opposition on August 15, 2015, on the Principal Register. KDB Pty Ltd., a company affiliated with Australian singer Kylie Ann Minogue (who, like Madonna, sometimes goes by just one name, Kylie), filed two extensions of time to oppose the application. Both were granted.
On February 22, 2016, KDB filed a notice of opposition to Jenner’s KYLIE mark. The opposition indicated Minogue’s belief that she would be harmed by Jenner’s proposed mark in part because successful registration for Jenner would create a likelihood of consumer confusion and diminish Minogue’s prior and superior rights. To support this argument, the notice of opposition set forth the basis for Minogue’s trademark rights. Minogue stated that she is an internationally renowned performing artist who has been in the entertainment industry since 1979, and that she launched her first album titled KYLIE in 1988.12 Minogue has had record sales of over $80 million internationally and tours worldwide. KDB has filed several trademark applications for KYLIE, including in IC 041,13 and owns several marks for KYLIE, including in IC 009 for sound recordings and music-related accessories and merchandise.14 Minogue also owns a registration for KYLIE in IC 014, 016, and 028 for jewelry, printed matter, and figurines, respectively.15
The parties requested several extensions, and on April 4, 2016, the USPTO granted a suspension until October 31, 2016.16 Parties in this position may attempt to come to a resolution where they can peacefully coexist. However, if Jenner’s attempts at a crossover music career17 have greater success than that of her big sister Kim, there might be continued tension between the Kylies down the line. Stay tuned.
Beyoncé, Jay Z, and Blue Ivy Carter
When Beyoncé and Jay Z announced that they were expecting a child, speculation began as to what the couple would name their offspring. When they formally welcomed “Blue Ivy Carter” into the world in 2012, theories abounded as to what the name meant. Without giving any credence to the Illuminati rumors, it is easy to say the name is unique and memorable.
Days after Blue Ivy’s birth, fashion designer Joseph Mbeh tried to register the mark BLUE IVY CARTER NYC for “infant, toddler and junior clothing,” including dresses, skirts, sleepwear, and undergarments.18 The USPTO blocked Mbeh’s application because third-party evidence indicated that Blue Ivy Carter was a famous individual, and that Carter’s fame was of such a nature that the purchasing public would incorrectly assume the mark was associated with her. After this preliminary denial from the USPTO, Mbeh abandoned his application.
In an age where parents are encouraged to reserve e-mail addresses and social media handles on behalf of their newborns, it should come as no surprise that Jay Z and Beyoncé took immediate steps to protect Blue Ivy’s name. After Mbeh filed for the trademark BLUE IVY, they filed their own intent-to-use application for the mark BLUE IVY CARTER, through Beyoncé’s legal entity BGK Trademark Holdings, LLC, in IC 003, 006, 009, 010, 012, 016, 018, 020, 021, 024, 026, 028, 035, and 041.19 After five extension requests, the application was abandoned on February 22, 2016, for failure to file a statement of use.
Interestingly, the couple filed a new intent-to-use application, again through BGK, for the same mark in the same classes, prior to the formal abandonment of the first application.20 This behavior raises the question of whether they actually have a bona fide intent to use the mark,21 or whether they are trying to preserve it for future use by young Blue Ivy Carter herself.22 Beyoncé does have a new apparel clothing line called Ivy Park, which was cofounded by Topshop, a multinational European fashion company. In addition, Parkwood Topshop Athletic Ltd. filed a trademark application for IVY PARK on February 4, 2016.23 The Ivy Park line could be the couple’s first step in using a mark related to the BLUE IVY CARTER mark in commerce.24 Interestingly, a Delaware corporation, 47 / 72 Inc., filed an intent-to-use application for POISON IVY PARK25 on April 14, 2016. The POISON IVY PARK mark was published for opposition in TMOG on September 20, 2016.26 It remains to be seen whether there will be continuing friction between these “Ivy Park” marks, which both encompass goods in IC 035.27
“Haters gonna hate,”28 and Taylor Swift seems to have a lot of haters when it comes to her trademark applications and enforcement activities surrounding her intellectual property portfolio. For example, after Swift challenged Apple’s practices in compensating artists,29 and began seeking trademark registrations for her song lyrics, she became the subject of an Internet meme. As part of the meme, after an individual would post a snippet, no matter how small, of a Taylor Swift song online, the poster would include the disclaimer language: “Taylor Swift™ No copyright infringement intended. Property of TAS LLC Management 2014©.”30 While the meme is legally imprecise, the sentiment behind it rings true for those who find Swift’s actions overreaching.
Swift is an artist who seeks protection for her creative output. A search for marks owned by Taylor Swift in the USPTO database uncovers more than 100 live and dead applications and registrations in various classes of goods and services—from IC 041 (entertainment services) to IC 003 (non-medicated toiletries)—comprised of Swift’s name, initials, song or album names, and song lyrics.31 Before Swift began her latest tour, she filed various applications with the USPTO for marks comprised of her song lyrics, such as THIS SICK BEAT32 in classes including IC 018 (bags), IC 016 (notes and stationary), IC 006 (keychains), and IC 020 (home décor), and PARTY LIKE IT’S 198933 in classes including IC 022 (lanyards) and IC 015 (guitar accessories).
Fans and Frenemies Alike Wonder, Why So Many Trademark Applications?
Many touring musicians make the bulk of their income from selling merchandise associated with their tours rather than from sales of their music. An artist like Taylor Swift is keenly aware that it is in her interest to develop branded products to sell in connection with her tours. Everyone has seen (and many have purchased) bootleg T-shirts in front of sporting events or concerts. By registering marks in various classes of goods and services, artists can add revenue streams as well as enforcement tools to go after infringers.
With the rise of DIY and websites like Etsy, fans themselves are selling branded products to other fans. From scarves incorporating the colors of the Hogwarts houses in the Harry Potter series to “Feyoncé” mugs, fans are monetizing fandom. Some artists embrace this fan gear, while others, like Swift and Beyoncé, have taken a more aggressive approach. Both Swift34 and Beyoncé35 have sent cease and desist letters to fans or other online purveyors selling gear that incorporates their trademarks.36 Beyoncé has even gone a step beyond sending cease and desist letters. On April 4, 2016, she filed suit against Andre Maurice, Leana Lopez, Lee Lee, and Feyonce Inc. for trademark infringement for selling Feyonce gear.37 On March 22, 2016, the USPTO also issued office actions against the FEYONCE marks indicating multiple issues with the applications, which included the reason that the marks were likely to be confused with Beyoncé’s previously registered marks.
Trademark owners are often advised to police their rights to avoid trademark dilution and the gradual erosion of their trademark rights. Thus, many trademark owners like Swift and Beyoncé follow a progressive system of action. First the trademark owner may send a cease and desist letter to a potential infringer before ramping up and filing a lawsuit. Sometimes, as with the FEYONCE marks, the USPTO will preemptively issue an office action indicating a potential conflict. The burden is on the applicant to respond to the office action and persuade the examiner that no conflict exists, or to amend the application such that the potential conflict is eliminated.
LMFAO: “Freaking”? Really?
Even celebrities can’t always get what they want. Or can they? While some stars have been able to file for and obtain trademark rights in their names relatively easily, others have not had immediate success. However, in the land of celebrity trademarks, perseverance often pays off. Perhaps this has to do with the fact that, for many celebrities looking to trademark their names, the costs associated with registering a trademark do not require any second thought. The music band LMFAO represents a good example.
LMFAO was initially denied trademark registration for its band name in 2008. Citing dictionary definitions and Internet slang sites, the USPTO examining attorney concluded that the acronym included the “F word,” and refused registration of the mark based on section 2(a) of the Lanham Act, which prohibits marks that are immoral or scandalous.38 LMFAO abandoned that application, but that was just the beginning. In 2012, LMFAO filed four new applications, this time explaining in a miscellaneous statement on the application that “the term LMFAO stands for ‘Laughing My Freaking Ass Off.’” By including this disclaimer on the application, LMFAO may have taken the hint from an unrelated third-party that tried to register the LMFAO mark for clothing in 2011.39 In response to an examining attorney’s inquiry into the meaning of the term, the third-party included “Laughing My Freaking Ass Off” as the meaning of the acronym.40 Interestingly, an “LMFAO STOUT” mark was registered on December 8, 2015, in IC 032 for beer with no inquiry from the examiner into the meaning of the acronym.41 LMFAO the band sent the brewers of LMFAO Stout, Pigeon Hill Brewing Co., a cease and desist letter for using the acronym.42 The parties eventually settled.43 The newly explained acronym was agreeable to the USPTO, and on March 10, 2015, a notice of allowance was issued for the LMFAO band’s word marks in IC 009, 014, and 025. Given the recent application of First Amendment law to trademark doctrine,44 perhaps LMFAO may one day claim rights in the alleged original meaning of its acronym.
With the rise of celebrity-branded empires of goods and services, celebrity trademarks are here to stay. However, counsel representing celebrities and common folk alike must remember that trademark rights in a personal name are not automatic, and obtaining a trademark registration with the USPTO in a personal name requires a solid argument that the name has secondary meaning when used in commerce. Further, practitioners should ensure that the date information and bona fide intent to use in the event of a section 1(b) application are accurate to protect their clients and themselves. In closing, it should also be reiterated that a mark that is not policed may lose its ability to function as a source identifier over time, but zealously policing a mark in commerce may earn you some haters. Just ask Taylor Swift.
BIO [from original byline]: Dina Leytes is a member of Griesing Law, LLC and chair of the firm’s Intellectual Property and Technology practice group. Christine E. Weller is an associate in the same firm and practice group. The authors thank Fara Cohen for her research assistance.
1. 15 U.S.C. §§ 1051 et seq.
2. 37 C.F.R. pt. 2.
3. 15 U.S.C. § 1051(a).
4. Id. § 1051(b).
5. 37 C.F.R. § 2.2(l) (“The term bona fide intention to use the mark in commerce as used in this part means, for a trademark or service mark, that an applicant or holder has a bona fide intention to use the mark in commerce on or in connection with the goods or services specified . . . .”). Where there is no bona fide attempt or intention to use the mark, the applicant risks having his or her mark or application canceled. The applicant must also provide a verified, sworn statement (under oath or in an affidavit) that he or she has a bona fide intent to use the applied-for mark in commerce. Id. § 2.2(n); see also id. § 2.33(b)(2).
6. Martha Elizabeth, Inc. v. Scripps Networks Interactive, LLC, No. 1:10-cv-1244, 2011 U.S. Dist. LEXIS 49702, at *66 (W.D. Mich. May 9, 2011) (finding support for an inference of bad faith and unlawful intent where the defendant claimed it had first used the applied-for mark BITCHIN’ KITCHEN in connection with goods and services on June 1, 2002, the same date of first use claimed by the plaintiff, owner of the mark BITCHEN KITCHEN, in her trademark application, where the biographical summary related to the defendant’s mark indicated that the defendant’s use had not begun until 2007).
7. See, e.g., 37 C.F.R. § 11.303 (candor toward the tribunal).
8. Id. § 2.89.
9. See, e.g., In re Enumclaw Farms LLC, Serial No. 85,942,195 (T.T.A.B. June 24, 2016) (refusing to register the mark DICKMAN’S for jams, jellies, pickles, etc., in International Class (IC) 029 because the mark was primarily merely a surname that was not the proper surname of anyone connected with the application, and finding that consumers would likely believe the goods were prepared and sold by someone with the last name “Dickman”).
10. 15 U.S.C. § 1052(c).
11. U.S. Trademark Application Serial No. 86,584,742 (filed Apr. 1, 2015). Jenner also filed an application for KYLIE in IC 041 and 045. Trademark Application Serial No. 86,584,756 (filed Apr. 1, 2015).
12. Kylie Jenner was born on August 10, 1997.
13. U.S. Trademark Application Serial No. 79,166,727 (filed May 21, 2015).
14. KYLIE, Registration No. 4,348,562.
15. KYLIE, Registration No. 3,131,572.
16. Minogue also filed a request for extension of time to oppose Jenner’s application in IC 041 and 045, which was granted through June 22, 2016. On June 22, Minogue filed a notice of opposition and a motion and brief to consolidate opposition proceedings pertaining to Jenner’s two applications for KYLIE marks, serial numbers 86,584,742 and 86,584,756. On July 27, 2016, the USPTO granted the motion to consolidate and gave Jenner until October 31, 2016, to answer.
17. Jenner appears on the track “Beautiful Day” by Lil Yachty, released on May 4, 2016. Jenner’s contribution is singing a line from the theme song to the PBS Classic Mr. Roger’s Neighborhood. After media backlash over the performance, it is unclear whether this track was serious.
18. U.S. Trademark Application Serial No. 85,513,502 (filed Jan. 11, 2012).
19. U.S. Trademark Application Serial No. 85,526,099 (filed Jan. 26, 2012).
20. U.S. Trademark Application Serial No. 86,883,293 (filed Jan. 22, 2016).
21. Where there is no good faith bona fide use of the applied-for mark, trademark counsel must evaluate whether they may ethically file the application and associated declaration and/or oath.
22. On May 17, 2016, an examiner’s amendment was filed to clarify that Beyoncé, a parent and legal guardian of Blue Ivy Carter, wholly owns BGK Trademark Holdings, LLC, and that she consented on Blue Ivy’s behalf to avoid future blocks of the application.
23. U.S. Trademark Application Serial No. 86,897,192 (filed Feb. 4, 2016).
24. Only character-for-character matches of a mark are acceptable to use as specimens when converting a section 1(b) application to a section 1(a) application. As such, use of the mark IVY PARK would not be sufficient to demonstrate use in commerce of the mark BLUE IVY CARTER.
25. U.S. Trademark Application Serial No. 87,001,440 (filed Apr. 14, 2016).
26. On September 29, 2016 a letter of protest was filed against the POISON IVY PARK mark by the owner of IVY PARK mark.
27. Blue Ivy Carter is credited as being the youngest person to ever debut on the Billboard Chart when Jay Z incorporated her first cries and heartbeat into the single “Glory,” which was released by Jay Z days after Blue Ivy’s birth. Nothing like a song credit and a trademark to add to the Basquiat. See Jay Z, Picasso Baby, on Magna Carta Holy Grail (Roc-A-Fella, Roc Nation, Universal Music Distribution 2012) (“Yellow Basquiat in my kitchen corner. Go ahead lean on that s*** Blue, you own it.”).
28. According to USPTO records, Swift is not the owner of the application for the mark HATERS GONNA HATE. See U.S. Trademark Application Serial No. 87,016,019 (filed Apr. 27, 2016). That owner is identified as 47 / 72 Inc., which also owns the POISON IVY PARK mark. Searching by this owner on the USPTO returns 64 applications filed in the past few months incorporating pop culture references and catchphrases.
29. Tim Bajarin, How Taylor Swift Saved Apple Music, Time (June 30, 2015), http://time.com/3940500/apple-music-taylor-swift-release/.
30. Madison Malone Kircher, Taylor Swift’s Fans Are Starting to Make Fun of Her Insanely Strict Copyright Rules, Bus. Insider: Tech News (Sept. 16, 2015), http://www.techinsider.io/taylor-swift-copyright-meme-taking-over-tumblr.
31. See, e.g., TAYLOR SWIFT, Registration No. 3,812,838.
32. See, e.g., U.S. Trademark Application Serial No. 86,434,785 (filed Oct. 25, 2014).
33. See, e.g., U.S. Trademark Application Serial No. 86,434,738 (filed Oct. 25, 2014). It appears that an individual named Myrna Ann Capers is the owner of the registered mark PARTY LIKE IT’S 1999 in IC 016 (party accessories), IC 025 (clothing goods), and IC 028 (toys). Registration No. 2,103,796 (filed Dec. 30, 1994) (registered Oct. 7, 1997).
34. Chris Payne, It’s Taylor Swift vs. Taylor Swift Fans on Etsy, Billboard (Feb. 6, 2015), http://www.billboard.com/articles/columns/pop-shop/6465325/taylor-swift-etsy-fan-sue-legal.
35. Erika Ramirez, Beyoncé Disapproves of “Feyoncé” Mugs Being Sold on Etsy, Billboard (Jan. 23, 2015), http://www.billboard.com/articles/columns/the-juice/6450786/beyonce-feyonce-mugs-etsy.
37. Knowles-Carter v. Maurice, No. 1:16-cv-02532 (S.D.N.Y. Apr. 5, 2016). The same defendants also filed for FEYONCE trademarks. See, e.g., U.S. Trademark Application Serial No. 86,834,686 (filed Nov. 30, 2015).
38. See U.S. Trademark Application Serial No. 77,692,237, Office Action (Aug. 20, 2009), available at http://tsdr.uspto.gov/documentviewer?caseId=sn77692237&docId=OOA20090820103850#docIndex=2&page=1.
39. Heather Morado, Is LMFAO an Immoral and Scandalous Trademark?, Seattle Ent. Law. Blog (Apr. 20, 2012), http://www.seattleentertainmentlawyer.com/blog/2012/4/20/is-lmfao-an-immoral-and-scandalous-trademark.html.
41. See LMFAO STOUT, Registration No. 4,865,939.
42. Michelle McCarthy, Most Ridiculous Celebrity Lawsuit of the Week: LMFAO Wants LMFAO Beer to Cease and Desist, Bitter Law. (Aug. 31, 2015), http://bitterempire.com/most-ridiculous-celebrity-lawsuit-of-the-week-lmfao-wants-lmfao-beer-to-cease-and-desist/.
43. Pigeon Hill Brewing Co. claims that LMFAO stands for “Let Me Fetch an Oatmeal Stout.” Id.
44. On December 22, 2015, in a 10–2 decision, the Court of Appeals for the Federal Circuit held section 2(a) of the Lanham Act to be an unconstitutional violation of the First Amendment right to free speech. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015). The Supreme Court of the United States granted certiorari on September 29, 2016. See Lee v. Tam, No. 15-1293, 2016 U.S. LEXIS 4462, 195 L. Ed. 2d 902, 85 U.S.L.W. 3137 (U.S. 2016).