In ridiculous but entertaining trademark news, last month the Kardashians filed documents in court trying to block Blac Chyna (real name Angela Renee) from filing a trademark on “Angela Renee Kardashian” as a brand name for her makeup line Lashed. Ms. Renee is the significant other of Rob Kardashian–the brother of the trio of sisters–and first child. The two have been discussing getting married, so she may well simply be trying to protect her future name but jumped the gun.
However, the Kardashian sisters’ filings vehemently opposed Ms. Renee receiving this trademark, alleging that they would suffer irreparable injury to their reputation and goodwill should the mark be allowed to move forward. They further stated that they own and control the rights to the Kardashian brand and its associated marks–having invested a substantial amount of time and money into the name Kardashian. What’s more, they argued that the public associates the name Kardashian strongly with the three sisters. This makes sense, because a trademark is designed to distinguish a brand and is damaged where a similar mark may confuse the public as to the source or sponsorship of goods–a concept usually known as trademark infringement.
Understanding the Kardashian’s Claim
The Kardashians are also not wrong about their assertions, they own trademarks on their name, are extremely famous and have all made businesses around their names–Khloemoney Inc., 2Die4Kourt, and Kimsaprincess Inc. However, the initial opposition turned out to be a mistake and the sisters have since said that they will try to privately work out the details of using the Kardashian name with Ms. Renee. Apparently, the lawyers for their businesses are in the practice of moving quickly to block any marks that may infringe on the Kardashian brand.
This is no surprise, protecting your trademark often necessitates vigilance and swift action. Filing for a trademark is fairly easy–you simply file with the United States Patent and Trademark Office, pay a fee, and you’ll generally have a ruling on your mark in about half a year. The majority of applications are approved, especially when the applicant is assisted by a trademark attorney. Once somebody in the trademark office gives a mark the stamp of approval, it is published that the mark has been approved there is a short 30-day period to file a notice of opposition to the mark before it takes effect. An opposition notice is much less formal, and much cheaper, than bringing a suit to cancel a mark once it is already in effect–which you can do within five years of a trademark being granted. Thus, it is often preferable to hire an attorney to keep an eye on trademarks being filed which might infringe your own mark and quickly respond. Generally, an opposition or cancellation action is brought where the mark is either invalid on its face (something that can happen for quite a number of reasons such as being so generic as to not serve to identify the brand) or where the mark damages the person bringing the action–usually by confusing the public.
Thus, it seems quite reasonable for the Kardashians’ lawyers to act as they did. The Kardashian name is very well known and almost exclusively associated with the sisters’ family. They have built up the name as a mark and most of the public think of them and their brands when they hear the word “Kardashian.” However, the situation becomes a bit more complicated because the trademarks sought are a surname–a situation where special rules apply. So how can you apply for a trademark on your own name or the names of others?
Name Calling: Trademarking First and Last Names
In order for a person’s name to receive a trademark, it has to have already become so distinctive in the eyes of the public. So much so that hearing the name makes the average person think of the products or services offered by the person who’s name they’ve heard. This is often too high of a bar for the average Jane or Joe off the street. However, it’s simple enough to achieve for celebrities. Thus, it’s fairly common for celebrities and star athletes to trademark their own names along with their personal brands–just like the Kardashian’s did. Lebron James, Arnold Schwarzenegger and the King himself–Elvis Presley–have all done so in the past. This means that you may not be able to file a trademark on your own name if you share it with another particularly famous person–a situation most would consider fairly odd–and in fact it may be unlikely that you could receive trademark protection on your own name even if you wanted to. However, many a businessman has made their name so famous as to receive protection from a trademark. Some surnames have become such famous trademarks that you barely even consider that they were once the names of an individual–McDonalds probably being the most famous example.
The restriction also makes sense when you think about it. Trademark law is designed to protect the public from confusion as to the source of a good by providing a protected indicator of the source of a good. If nobody knows who you are, then your name doesn’t serve as a particularly good indicator for the average member of the public.
Applying for such a mark also carries its own special set of requirements, apart from those described above and those required by any other trademark applications. When attempting to trademark somebody else’s name–whether first name, last name, or even a well-known nickname–it is required that you receive their written consent so long as they are living. Even if they are dead, there are a number of issues with using a person’s name if they were famous in life–an issue of state by state right of publicity law which is its own can of worms too complicated to address in this article. When filing a trademark on your own name, your consent is simply presumed for obvious reasons.
On the flip side of this, just because somebody else is trying to trademark your name you will not necessarily be able to stop them just because it is your name. Unless your name is well-known enough, as discussed above, and famous enough in the same field as the mark you are challenging you are unlikely to get much traction.
Even Though It’s Over, This Could Be an Ongoing Problem
So, if Blac Chyna’s trademark were not being resolved in private by the Kardashian sisters and Ms. Renee, would she succeed against the might of the Kardashian mark? It’s hard to say with so little information before us. However, while she may have the Kardashian name eventually, she certainly did not have it at the time she applied for her mark. What’s more, even if she obtained written consent from her fiancé Robert Kardashian, it is unlikely that the public at large associates her products with the Kardashian brand. Thus, if the sisters don’t want Ms. Renee to use their name on her products, they likely could dash her hopes–barring her from using the family name in business.