Trademarking a Personal Name: Jenner and Minogue's Fight Over "Kylie"

Can You Trademark Your Personal Name? What You Can Learn From the "Kylie" Trademark Dispute

The 2017 trademark dispute between Kylie Jenner and Kylie Minogue over the name "Kylie" is back in the headlines again, and it has many people - especially social media personalities and other influencers - wondering whether or not they can trademark their own personal name. Jenner and Minogue are far from the only celebrities who have tried to trademark their names, although some have more success than others. In fact, the list includes such A-list stars as Arnold Schwarzenegger, Beyoncé, Taylor Swift, and many more. However, just because they were successful in registering their personal names doesn't necessarily mean that registering your own will be an easy time. Here's what you need to know about registering your name as a trademark.

Registering Your Personal Name as a Trademark

Before your personal name can be trademarked, you'll want to already be using that name as a way of identifying your goods and services in commerce. This means using it as a part of your branding, and including it on what you sell, so that the public associates that name with your products and can use it to determine that those products came from your business. Doing so establishes common law trademark rights, which can offer some limited protections and oftentimes makes a given mark easier to register at the federal level.

Just like with any other trademark, you'll need to meet the standards of the United States Patent and Trademark Office (USPTO) in order to successfully register. For example, you'll need to be able to show that the use of your name in connection with your business's goods or services helps them stand out against the competition. You won't be able to trademark the name itself, either. It has to be connected to a good or service to be eligible for registration.

What Does the USPTO Mean by "Secondary Meaning?"

The USPTO also requires personal names to satisfy other criteria in addition to the standard rules before they can be registered as trademarks. Specifically, this means demonstrating that the proposed trademark name has "secondary meaning." This requirement is important because it helps even the field for individuals with more common names who are still interested in trademark protections. There are two ways of showing secondary meaning.

The first way that an applicant trying to register their personal name as a trademark can demonstrate secondary meaning is by proving that the name has acquired distinctiveness through its use in commerce. In other words, the public must generally associate the name with its connected good or service. Advertising and marketing are essential to accomplishing this. The second method for demonstrating secondary meaning for your personal name is to show the USPTO that using your name with your product or service has an impact on consumers.

Registering Your Surname, or Last Name, as a Trademark

Trademarking just your surname, commonly known as your last name, can also be a little tricky. This is because the USPTO imposes additional standards when trademarking a surname. Essentially, the applicant must be able to prove that the proposed trademark isn't "merely a surname.". Similar to secondary meaning, this means that the mark have some meaning or value outside of its existence as a surname. The USPTO looks at five factors when evaluating this:

• Whether the surname is rare
• Whether the surname belongs to someone connected to the applicant
• Whether the surname has any other recognized meaning
• Whether the proposed trademarks looks and/or sounds like a surname
• Whether or not the proposed trademark is stylized

Why Was Kylie's Application for Her Own Name Initially Denied?

The main reason that Jenner's application for the "Kylie" trademark was initially denied comes down to something known "likelihood of confusion." Likelihood of confusion exists whenever the USPTO believes that the general public would have a difficult time differentiating one trademark from another. The goods and services don't even have to be an exact match - they only need to be related.

As the office action letter argues, Kylie Minogue, her representatives, and the USPTO's examining attorney all believed that Jenner's "Kylie" trademark could be easily confused with Minogue's own, preexisting "Kylie" trademark. However, the issue was ultimately resolved when Jenner's team reached out to Minogue's so that they could work out a Consent Agreement that would allow both parties to use the "Kylie" trademark without further incident.

What Does This Mean for Me?

There are three main takeaways from this article for celebrities, social media personalities, influencers, business owners, and others looking to trademark their own personal names:

• Avoid Likelihood of Confusion - Make sure that your trademark name is different from pre-existing trademarks in competing or related fields. A Trademark Clearance Search can give a good idea of the competition that your mark will face.
• Pay Attention to Name Rules - Familiarize yourself with the USPTO's standards for trademarking personal names, including first names, surnames, and combined names. This includes accounting for secondary meaning requirements, as well as those that exist for surnames in particular.
• Hire a Lawyer - A trademark lawyer can be a powerful ally when pursuing a federal trademark. They can be instrumental to preventing problems before they happen, and can even help negotiate agreements and resolve disputes should they arise.

If you're looking to trademark your personal name with the USPTO, then having the right representation helps. A trademark attorney can during the research phase, the registration process, and can even work to protect and maintain your trademark post registration. Contact FL Patel Law's Tampa Bay Trademark Attorneys by calling (727) 279-5037.