Kylie Jenner Suffers Trademark Loss but it Has Nothing to do with Kylie Minogue

Kylie Jenner has been dealt a loss in connection with a recent trademark matter involving her name. Despite what is being widely misreported as a trademark defeat for the reality television star and budding cosmetics mogul in connection with the trademark oppositions filed by singer Kylie Minogue last year, that is not actually the case - at all.

Reports from British Vogue, the Telegraph, Daily Mail, Yahoo, Mashable, Huffington Post, US Weekly, People, Billboard, AOL, MTV, Forbes, Slate, Business Insider, CNBC, Refinery 29, Fox News, International Business Times, Elle Australia, and a number of other sites assert that Minogue has "successfully blocked Jenner" from registering a trademark for her name.

In reality, the U.S. Patent and Trademark Office ("USPTO") has not rejected Jenner's "Kylie" marks (serial nos. 86755582, 86584742, and 86584756), which are the trademark that Jenner's battle with Minogue centered on. Instead, that matter - which involved completely different trademark applications than the one that the USPTO has refused to register in the matter at hand - was settled by the parties and dismissed last month.

The recent bout of trademark news actually involves Jenner’s “Kylie Jenner” trademark application (serial no. 86810719), which was filed in November 2015. According to the USPTO, that mark - which Jenner plans to use in connection with "Belts; Bottoms; Coats; Dresses; Footwear; Gloves; Headbands; Headwear; Jackets; Loungewear; Scarves; Sleepwear; Socks; Swimwear; Tops; Undergarments" - cannot be federal registered because it is “confusingly similar” to other previously registered trademarks.

What marks are those? Well, according to the USPTO’s first Office Action – a letter sent to notify an applicant about issues with his application, including the reason why registration is being refused or what requirements must be satisfied – the “Kylie Jenner” mark is too similar to Mimo Clothing, Corp.'s registration (no. 4166624) for “Kylee” in the class of goods that covers “Belts; Blouses; Bras; Capris; Cardigans; Coats; Corsets; Coveralls; Denims; Dresses; Footwear,” among other things. Jenner’s mark also allegedly clashes with the “Kendall and Kylie” mark (registration no. 4455503) that Jenner also holds.

Note: The recent Office Action sent by the USPTO to Jenner is the second of two. The USPTO first rejected Jenner's mark - by way of an Office Action - in December 2015, to which Jenner's counsel responded. The USPTO sent another Office Action - this time a final one - to Jenner in July, which stated, in part: "For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 4,166,624.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b)." The registration cited here is Mimo Clothing, Corp.'s "Kylee" registration, not Kylie Minogue's trademarks. 

And it is in connection with that proceeding - one that is entirely separate from the now-settled matter with Minogue - that Jenner's counsel recently filed an appeal with the Trademark Trial and Appeal Board, a body within the USPTO responsible for hearing and deciding certain kinds of trademark cases, including oppositions and appeals.