For about a decade now, the Kardashians have built a huge empire on their last name. From media and social media to beauty products and clothing, they’ve branded just about everything with the moniker. Earlier this year, though, the name turned up on a trademark application from someone surprising: their brother Rob’s fiancée Blac Chyna. Chyna, a model and business owner herself, filed her intent-to-use the mark “Angela Renee Kardashian,” her future married name, as a service mark for use with entertainment and brand promotion. Her intent to register was published to the United States Patent and Trademark Office’s (USPTO) Official Gazette in November 2016, and the following month the Kardashians, who have more than 40 trademarks registered, filed an opposition with the Trademark Trial and Appeal Board to prevent Chyna’s registration.
The Notice of Opposition states that because of Kim, Kourtney and Khloe Kardashian and “their investment in the KARDASHIAN Marks and the Kardashians’ world-wide fame, the KARDASHIAN Marks have acquired distinctiveness and goodwill in the United States and throughout the world. KARDASHIAN Marks are advertised and promoted not only in the U.S., but also internationally, using a wide range of methods and forums including television, print media, publicity tours, expos, shows, the Internet, social media, cross-promotions, celebrity endorsement, e-newsletters and more. [Kim, Kourtney and Khloe] have become uniquely associated with the Kardashians and are immediately identified by consumers as originating from, or associated with, them.”
The Notice raises four statutory grounds for opposition: (1) likelihood of confusion, (2) dilution by blurring, (3) dilution by tarnishment, and (4) false suggestion of a connection with persons, living or dead, institutions, beliefs, or national symbols, or brings them into contempt, or disrepute.
The instinct, of course, is to say, “Well, isn’t that going to be her name? How can they block her from using it the same way they have?” It makes sense, however, when you consider the purpose of trademarks. Trademarks are meant to identify a source; that is, consumers see it on goods or associated with services and understand that the product or service comes from a particular person or company. Also, the source gets to maintain its reputation with customers by being the only one who can use that particular identifier or mark. So, given that real names can be registered as trademarks, they serve as source identifiers, too: Marc Jacobs, Calvin Klein, and Martha Stewart are all brands built on real people’s names that have also been trademarked. Each could definitely pursue opposition against people who shared those names and wanted to register trademarks for similar goods. The law here cares about consumers finding the goods and services from the people and places they want, and those goods and services being able to have goodwill with their customers.
According to Forbes, the Kardashians and Jenners (the other half of their blended family) raked in $122.5 million from their business ventures in 2016, with Kim Kardashian West listed as the highest paid reality star. They’ve built a certain kind of brand, and don’t want Chyna capitalizing on it, damaging it and/or creating confusion for consumers. Trademark owners also have to zealously protect their mark to keep it, so it’s not surprising that they would pursue this action against someone who is about to become family (maybe it will also make for good fodder for one of their many TV shows).
Chyna’s response is due in January but after news of the Notice of Opposition broke, the Kardashians seemed ready to back off and explained that it was simply standard procedure for their attorneys to oppose trademark applications that use their name. The Notice remains in place as of this writing, though.
For more information on the trademark application process, contact The Fried Firm.