By Pritika Ramesh

In April 2015, Kylie Jenner filed an application with the United States Patent and Trademark Office (USPTO) to register her first name for “advertising services” and “endorsement services.”[1]  Jenner then launched her cosmetics line, KYLIE.[2]  In February 2016, Kylie Minogue, a well-established Australian pop star, opposed Jenner’s request for trademark protection because there was possible confusion and damage to Minogue’s brand.[3]

Celebrities often file a trademark application with the USPTO to protect the value associated with their own name.[4]  However, the USPTO will only grant trademark protection for individuals who are able to establish that their name has secondary meaning.[5]  Multiple artists have successfully obtained trademark protection from the USPTO for their name or a phrase commonly used with their brand.[6]  For example, 50 Cent was granted trademark protection for his stage name and successfully sued Taco Bell in 2008 for infringing on his trademark with their 79, 89, and 99 cent menu.[7]  On the other hand, Jay-Z and Beyoncé attempted to register their daughter’s name, Blue Ivy, but since there was a pre-existing trademark for the name based on an event-planning firm in Boston, the trademark is now registered under the name Blue Ivy Carter.[8]

In 1999, the United States Congress increased the scope of protecting names as trademarks through the Anti-Cybersquatting Consumer Protection Act (ACPA).[9]  “ACPA allows celebrities (and individuals with valuable businesses) to prevent others from registering their names as Internet domain names without permission—and the law even extends to unregistered trademarks.”[10]  The ACPA ensured that Beyoncé controlled the domain name “” since “” was owned prior to the name being trademarked as a “celebrity.”[11]

Trademarks generally hold a lot of value for businesses and celebrities grow their own businesses based on the value of their celebrity persona.[12]  This form of intellectual property allows businesses to protect their brands or logos for as long as they remain to be used in commerce.[13]  Trademarks are a critical asset to any business, and the value of a trademark can actually appreciate over time.[14]  When a business assigns, or sells, the rights of their trademark, it not only transfers the rights associated with using the name in commerce, but it also transfers the “good will” associated with that trademark, which can sometimes be more valuable than the tangible assets the business controls.[15]

Kylie Jenner clearly wanted to protect the value of her celebrity persona in connection with the launch of her cosmetics line.  In addition to filing for protection of her first name, Jenner also applied for the protection of “Kylie Jenner” to be used in connection with various clothing and accessories.[16]  This application was denied in July 2016, but Jenner appealed the decision since Jenner eventually wants to have a clothing line branded as “Kylie Jenner.”[17]

Jenner seeks to use “Kylie” in relation to her cosmetics line. However, Minogue already owns “Kylie” in connection with perfumes, toiletries, music, live entertainment, jewelry, toys, and printed materials.[18]  Before the USPTO decided on Jenner’s petition for a trademark of “Kylie,” Minogue withdrew its opposition; however, the USPTO still rejected Jenner’s application.[19]  Although the USPTO did not officially comment on the reason for rejecting the application, “it seemed to indicate that Jenner was not the most distinctive Kylie in the showbiz arena.”[20]  Minogue’s brand and opposition must have had some influence on the USPTO’s decision, since Minogue has always been referred to as “Kylie” by her fans.[21]

With another appeal pending, it is unclear whether the USPTO’s decision will be reconsidered.  Since the trademark is based on a celebrity name, it is more difficult to find secondary meaning for the mark in context with a product, especially since Jenner’s cosmetic brand has only recently been launched and it hasn’t had time to gain recognition amongst consumers.  Additionally, the targeted product market for both celebrities may be deemed to overlap, so this will be another factor to analyze on appeal if it is granted. Either way, the trademark rejection will not be easily accepted without a fight from Jenner’s team because the value of her brand is on the line.

[1] Tessa Wong, Kevin Ponniah, & Jay Savage, Kylie Minogue vs Kylie Jenner Trademark Battle, BBC News (Feb. 7, 2017),

[2] See id.

[3] See id.

[4] See Liisa M. Thomas, Creating and Protecting Rights in Personal Names, International Trademark Association (July 15, 2011),

[5] See id. (explaining that the intended trademark must be identifiable as a single source of origin for a particular good or service).

[6] See Kylie Minogue And Kylie Jenner Spar Over ‘Kylie’ Trademark, Forbes (Feb. 7, 2017, 4:48 PM),

[7] See id.

[8] See BLUE IVY CARTER, Registration No. 85,526,099.

[9] Kylie Minogue And Kylie Jenner Spar Over ‘Kylie’ Trademark, Forbes (Feb. 7, 2017, 4:48 PM),

[10] Id.

[11] Id.

[12] See Abigail Rubinstein, 7 Reasons Why Trademarks Are Important to Your Business, Entrepreneur (July 24, 2014),

[13] See id.

[14] See id.

[15] Alexander F. Brigham & Stefan Linssen, Your Brand Reputational Value Is Irreplaceable. Protect It!, Forbes (Feb. 1, 2010, 5:15 PM),

[16] Tessa Wong, Kevin Ponniah, & Jay Savage, Kylie Minogue vs Kylie Jenner Trademark Battle, BBC News (Feb. 7, 2017),

[17] Id.

[18] Id.

[19] Ronda Majure, Keeping Up With The Kylies: a 21st Century Trademark Battle, Inside Counsel (Feb. 10, 2017),

[20] Id.

[21] Id.

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