The Kylie v. Kylie battle is far from over but after making headlines last year for their bitter U.S. trademark rivalry, this round is not between Kylie Jenner and Kylie Minogue. This time, Kylie Jenner is taking on Mimo Clothing, the holder of the “Kylee” mark and the reason the U.S. Patent and Trademark Office (“USPTO”) refused to register her “Kylie Jenner” mark in connection with clothing and accessories this past year.
As reported by WIPR, Jenner’s legal team filed a Petition to Cancel late last month with the U.S. Trademark Trial and Appeal Board (“TTAB”) – a body within the USPTO responsible for hearing and deciding certain kinds of trademark cases, including petitions for cancellation – involving Los Angeles-based Mimo, the company that holds the “Kylee” trademark in the class of goods that covers clothing, belts, lingerie, and shoes, among other similar goods.
According to Jenner’s petition, Mimo is not actually using the mark and may have never used it at all, thereby giving the TTAB grounds to cancel the mark. Actual use of a trademark in commerce is, after all, a pre-requisite to achieving federal registration with the USPTO.
Jenner’s petition claims: “[Jenner] … alleges that Mimo fraudulently procured its registration for the [Kylee mark] by making material misrepresentations of fact to the USPTO in connection with the application for the mark, which it knew was false and its misrepresentations were made with the intent to defraud the USPTO." It continues on to state: "Mimo fraudulently obtained registrations for the [Kylee mark] because Mimo had not used the mark in commerce (as defined by the Trademark Act) on the dates indicated in the trademark application.”
Still yet, Jenner alleges that even if Mimo did, in fact, make sufficient use of the mark to warrant a registration, it has since abandoned it by discontinuing that use and failing to use the mark within the past three years. (In addition to having to actually use a mark to gain a federal registration, a trademark holder must continue to use the mark in order to keep that registration).
As a result, Jenner’s team is asking the TTAB to cancel Mimo’s “Kylee” registration. The TTAB’s decision stands to impact the registratability of Jenner’s “Kylie Jenner” trademark, which was formally rejected by the USPTO in July, due to its similarity to Mimo’s already-registered “Kylee” mark in the same class of goods. If Jenner’s legal team can get the TTAB to cancel Mimo’s mark, there is a good chance that Jenner will be able to register her “Kylie Jenner” mark in the class of goods that extends to garments and accessories.
This latest development comes on the heels of widespread misreporting by the press in February that Jenner’s trademark applications were shot down after Minogue "successfully blocked Jenner" from registering a trademark for her name, when it reality, Jenner’s application was actually blocked due Mimo’s existing trademark, “Kylee.” More to come …