In February 2016, Kylie Minogue said, “Not so fast.” By way of an opposition proceeding before the U.S. Patent and Trademark Office (“USPTO”)’s Trademark Trial and Appeal Board, counsel for the wildly popular Australian singer wanted to block the potential registration of a trademark for the word “Kylie” for use in connection with advertising and endorsement services. The party seeking federal rights in the word was none other than Kylie Jenner.
That initial opposition filing was followed up by two more: in June 2016, KDB Pty Ltd., Minogue’s business entity, pushed back against another application for the word “Kylie,” this time for use in connection with “entertainment services, namely, personal appearances by a celebrity, actress and model,” and in October 2016, she took issue with a pending application for “Kylie Cosmetics.”
Minogue argued in her oppositions – which are formal filings that may be submitted to the USPTO by party who believes it may be damaged by registration of a specific trademark – that if the USPTO approved Jenner’s applications that it would lead to confusion among consumers between the two Kylies and dilute her brand, particularly since KDB argued that Jenner is little more than a “secondary reality television personality” best known for her “photographic exhibitionism and controversial [social media] posts.”
The Australian company also pointed to existing trademark registrations held by Minogue for the term “Kylie” that cover entertainment services and music recordings, as well as those for the terms “Kylie Minogue darling” and “Kylie Minogue,” to bolster its argument that Jenner’s trademark applications should be refused registration. The USPTO commonly refuses to register trademarks when the applied-for mark is confusingly to other, already-registered marks, an determination that considers not just the similarity of trademarks at issue but also types of goods and services on which the marks are being used.image: Minogue
Before the two Kylies’ legal teams could engage in an official back-and-forth before the Trademark Trial and Appeal Board about the merits of Minogue’s oppositions, Jenner’s attorney filed a motion seeking to put the proceedings on hold for 60 days as “the parties, through their attorneys, are engaged in settlement discussions that, if successful, will result in the termination of this proceeding.”
Jenner – whose own Kylie Cosmetics brand, which she launched in late 2015, has been valued at close to $1 billion – filed a second motion for suspension 8 months later in November 2016, seeking an additional hold in light of continued settlement talks.
After what appear to have been successful discussions, Minogue opted to withdraw her oppositions (which were consolidated into one proceeding) in early 2017, meaning that the parties were formally putting their fight to bed. (It is worth noting that the oppositions were dismissed without prejudice, meaning that Minogue could have reinitiated the fight prior to the registration of Jenner’s marks). Minogue’s move to withdraw the oppositions also meant that Jenner’s trademark applications were free to proceed in the registration process, and over the course of a 6-month period in 2018, all three of the marks were registered with the USPTO, thereby giving Jenner exclusive, federal rights in the marks.
Fast forward to June 2019 – more than 3 years after the two Kylie’s made headlines for their name-game trademark battle – and Minogue has indicated the impetus for her fight against Jenner’s “Kylie Cosmetics” application, in particular. Over the weekend, the Aussie star announced the launch of her own beauty endeavor. Joining her longstanding roster of fragrances, the singer’s newly-released collection currently consists of eyeshadow, lip oil, “eye to cheek glitter” and lip gloss – all branded with “Kylie” and all available on her site Kylie.com.
As for whether the parties’ trademark settlement spoke to the possibility of a launch of Kylie Minogue cosmetics is unclear, as the terms are entirely confidential. There is a chance, of course, that Minogue withdrew her oppositions on the basis that Jenner would refrain from legally pursuing her on infringement grounds should be launch her own beauty goods. Should Minogue’s new venture go off without a legal hitch, we might be able to assume that was the case.