Archives for May 2015 | Intellectual property and business law blog

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Steve O'Donnell, Ph.D. Registered Patent Attorney

Great. More Kardashian news

Kylie and Kendall Jenner* are in the news for filing papers to trademark “Kylie” and “Kendall,” respectively. Predictably, some have responded with outrage because this supposedly means something.

Calm yourself. It’s less interesting that you probably think.

According to The Old Garish Lady (TMZ), each woman is seeking to trademark their names for “entertainment in the nature of providing information by means of a global computer network in the fields of entertainment, fashion and pop culture,” and for personal appearances by “a celebrity, actress, or model.”

Now, we don’t know if the marks will issue or not. People can trademark their names. It’s not the easiest thing in the world to do, but it happens. In order to do it, the name has to not only identify the person, but also has to identify the relevant goods/services. For example, if I say “Ralph Lauren” you might think of the man himself, but it’s at least as likely that you’ll think of the fashion brand (or the late 80s when every guy I knew and didn’t like wore Polo). Another example is Donna Karan. I don’t think I could pick her out of a crowd, but I know the name as a fashion brand (and generally like the fragrances). If I say “Kylie” do you think of “personal appearances by ‘a celebrity, actress, or model?’” If not, then don’t be surprised if the trademark examiner rejects the application.

But, lets say they get the trademarks, what then? Still, it’s not that interesting. Neither name is particularly unique (versus say, “Moon Unit Zappa”) so the protection would just cover the narrow fields in which they’re already “working.” So, although someone else might be prohibited from starting a entertainment/fashion/pop culture blog called “Kendall” that will likely be the extent of it. A registration shouldn’t even impact other people named Kendall from using their full name for any reason because the addition of a surname would likely be enough to differentiate the “goods or services.”

Kylie Minogue will still be able to do her thing without worrying about Kylie Jenner, thankfully.

*Ok, maybe not exactly Kardashian, but close enough.

Left Shark

Remember last year’s Super Bowl halftime show? Sure you do. It was one of the better halftime shows in recent memory. There was Katy Perry, Missy Elliot and Lenny Kravitz. But the real star was Left Shark. A little into his performance, Left Shark took a stance against choreography and asserted himself as a true apex predator. Or well, went a little off-script.

Just as Fast as a Shark, Left Shark captured the hearts and minds of a world that had grown weary and jaded. Within days, a few entrepreneurs offered wares to quench the public’s thirst for Left Shark merchandise. Soon, Ms. Perry and her people realized that they could capitalize on the popularity of Left Shark, but only if they moved to lock down the market. This, of course, led to a few trademark filings and letters to people selling their own Left Shark merchandise telling them to stop or face the wrath of her own sharks (lawyers).

Recently, the first of these trademark registrations was refused for a few reasons.

First, the examiner found that Left Shark didn’t identify Katy Perry’s musical/dance performances. In other words, no link was established between the two. Had the shark been used as part of her advertising, such as a logo, the needed linkage would probably be found.

Second, the picture of Left Shark doing his thing and being all kinds of awesome didn’t match the drawing submitted with the application.

And lastly, the examiner found that the identification of goods as ‘costumes’ and ‘figurines’ was a little vague.

There was also a bonus objection stating the description of the shark in the trademark application was inaccurate because it omitted ‘black’ as a color appearing in the illustration, but that’s minor enough to be taken care of over the phone.

Does this mean Left Shark is free game for all to use? Not quite. You’d still probably get a nasty letter from Ms. Perry’s other sharks and they could still try suing, even though they don’t have an official registration. Further, it’s not over. If Katy Perry and her people still want the registration, they can respond and amend their application to fix the problems. I don’t think any of the examiner’s objections can’t be overcome, it’d just take a little work.