image: Yeezy

image: Yeezy

In the latest round of #FashionFakeNews, Kanye West is said to be facing a legal battle over his right to use the “Yeezy” trademark on garments. Articles from TMZ, New York Post, Complex, Hypebeast, and a handful of other websites claim that because a Chinese company named Fujian Baby Network Technology Co. “swooped in to file paperwork for ownership of the ‘Yeezy Boost’ trademark for items beyond footwear,” thereby “staking its claim over Kanye West’s Yeezy clothing brand name” before Kanye did, the superstar is out of luck. That is patently untrue. Here’s why …

Kanye West – by way of his intellectual property holding company, Mascotte Holdings, Inc. – holds an array of federally registered trademarks for everything from his full name to “Yzy” and Yeezy. The rapper-turned-fashion designer has maintained federally-registered trademark rights in “Yeezy” for use on “Clothing, namely, footwear, shoes, sneakers” since this past January, even though technically, since he has been using the Yeezy name on clothing and accessories since at least February 2015 (his Yeezy Season 1 runway show), he has held rights in that trademark since then regardless of whether or not he registered the trademark. 

West’s legal team has since filed a separate application with the U.S. Patent and Trademark Office (“USPTO”) for “Yeezy” for use on clothing, specifically. That application for registration was filed this past August and has been “suspended.”

The only part of this equation that the likes of TMZ and Hypebeast got right is that the suspension of West’s newest trademark application involves Fujian Baby Network. Yes, Fujian Baby is involved. The accuracy of these reports stop there, though. 

As distinct from a refusal by the USPTO to register a trademark, the suspension of an application means that the application has been put on hold temporarily (usually in 6 month periods) pending determination in another matter. Here, that other matter is a pending trademark application refusal from the USPTO (a much more damning response than a suspension) in connection with Fujian Baby Network’s “Yeezy Boost” trademark application for registration, which the Chinese company filed in June 2017.

A few things rather easily shut down the possibility (that TMZ and co. suggest) that Fujian Baby Network will be granted a registration for the “Yeezy Boost” mark and West will be forced to file a lawsuit to regain his rights.

For one thing, the fact that Fujian Baby filed its application for “Yeezy Boost” (for use on “tops as clothing; pants; jackets; sports singlets; caps being headwear; hosiery; scarfs; girdles; ski gloves; footwear”) before West’s legal team filed its Yeezy clothing application, does not actually matter. It does not matter at all. 

In the United States, where these applications were filed, priority in terms of trademark rights is not granted to the first party to file a trademark application; that is how the system works in China, though. That is why trademark-squatting is extremely rampant in China; it is also why Western brands spend years fight for the right to use their trademarks in China. On American soil, however, one must be the first to actually use a trademark in order to gain rights in it.

(That is why an individual could file a trademark application against another without ever even having a trademark registration; registrations do not create trademark rights, using a trademark on products and services in commerce created trademark rights; registration is more or less a formality and a way to enforce rights on a broader basis). This is significant because as indicated by Fujian Baby’s trademark application, they are not yet even using the Yeezy Boost mark. West, on the other hand, has been using Yeezy in connection with clothing he showed his first Yeezy collection in February 2015. 

Another thing: When it comes to trademark registrations, a party will not be granted a registration if the mark they are seeking to apply for is “confusingly similar” to others’ already-registered marks. This is very problematic for Fujian Baby, as the USPTO pointed out in its initial refusal to register the “Yeezy Boost” mark. In a letter dated September 14, 2017, the USPTO points to two already-registered trademarks – West’s “Yeezy” mark for use on shoes and a registration for “Boost” that belongs to Boost Worldwide, Inc., an unrelated company – to show that “Yeezy Boost” is too similar to be registered.

Once the USPTO sends a refusal letter to a trademark registration applicant, that party has 6 months to respond and make its case (at which point the USPTO can pushback again or let the application move ahead to the next stage of the registration process). Since the letter to Fujian Baby was sent on September 14, the company’s window of opportunity to fight for its right to “Yeezy Boost” is closed and the application will be deemed formally abandoned in the very near future.

That also means that West’s newest application for Yeezy will soon no longer be categorized as “suspended” and in fact, will likely be approved, without West having to fight for it.

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