Names… We have them. We give them. We hate them. We love them. We, sometimes, even have derivatives; think nicknames. As you have heard on this blog, at the Summit, and no doubt, various other information outlets, the name you use is extremely important in your business. It signals your brand. We spend hours, days, weeks, months, dare I say, years, experimenting with just the right name for our business. And then there are those who decide, quite simply, I am my brand, and my brand is me. They name their company after themselves (sans Jr. or III, of course). We are taught from an early age that there is only one of us. We are unique. No one else is like us. So as we grow, we extend that thought to our business and our brand. Now, I don’t want to burst anyone’s individuality bubble, but when it comes to names and using our own name for our brand, the likelihood of your name being the only one out there in the entire world is almost zero. What is that children’s song? “John Jacob Jingleheimer Schmidt, his name is my name too…” Right, so let’s take a look inside a battle that is being played out in the court system right now. It is a tale of two Kylies.
On the one hand we have Kylie Minogue; on the other, we have Kylie Jenner. Please for the sake of this article, put aside whatever you think about their character, style, or personal lives. Just focus on their names, or should I say name. See they have the same one. So what are they fighting over? Here is the background.
Australian singer, songwriter, and actress Kylie Minogue has been around since the 1980s. On the other hand, Kylie Jenner’s first claim to fame was when her family’s TV show gained notoriety which was around 2007. So Kylie Jenner, in 2015, decides to file a trademark application to protect her first name in “relation to advertising, entertainment and personal appearances by a celebrity, actress, and model.” Kylie Minogue filed a notice of opposition to Jenner’s application in early 2016. Her argument was that she (Minogue) had already successfully registered “Kylie Minogue Darling,” Lucky-the Kylie Minogue musical,” and “Kylie Minogue.” She also has owned the domain name kylie.com since 1996 (before Kylie Jenner was even born). Minogue had the facts and the law on her side- a good place to be in any legal dispute. Of course Jenner is appealing, however her appeal is likely to fail since trademark protection hinges on one’s use of the mark. Minogue has a 3-decade head start on Jenner.
So why does Kylie M win over Kylie J? Here is why in plain terms.
- Trademark law hinges on use. This means who ever uses a name first in commerce has the advantage. Furthermore, if a business owner uses the mark and registers it, this gives them an even greater advantage. The registration of the mark serves as notice to the world that this particular business is using this mark to identify their brand.
- The names are so similar that there is a high likelihood of consumer confusion. An examining attorney with the USPTO (US Patent and Trademark Office) will look at 8 specific factors to determine if there is a likelihood of confusion of the marks. If there is, he or she will not allow the mark in question to be registered.
Registering a name is difficult. I have seen firsthand two companies in my little region of the world go to legal blows over their last name in business. In that situation, the one who had continuously used the name the longest prevailed even though both parties shared the same name. The losing party had to stop using their name and rename their brand. Most of the time regular folks like you and me cannot register their personal name for trademark protection. However, if the use of your name has been long enough that it has acquired “secondary meaning,” which means a close association with the product or services that you offer then it is possible. There are strong reasons creatives want to use their name to build their brand, however there are strong arguments against doing so as well. Because there are compelling reasons on both sides of the issue, I like to say this is where a business decision and a legal decision intersect, and you, as the business owner, knowing both the business and legal ramifications, must be the boss and decide. Whatever you do, make sure that you understand both. If you do not, seek the advice of an expert that can walk you through the possible scenarios that are specific to your situation.
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