United States Patent and Trademark Office

Kylie Minogue: “Used under Creative Commons License via Daniel Krucynski. Some rights reserved.”

Everyone needs to calm down.

At least everyone in the entertainment world.

Various major news outlets have been reporting that “Kylie Minogue successfully blocked Kylie Jenner from trademarking the name ‘Kylie!’”—but Kylie Minogue had nothing to do with it. Yahoo, the Huffington Post, and the Today Show were just several news providers I saw touting the trademark-war-turned-cat-fight, when in reality the Kylie v. Kylie throwdown was settled amicably last month by the parties. Minogue originally filed an opposition against Jenner’s application for the “Kylie” mark, claiming it would dilute her own similar marks. In light of successful settlement negotiations, Minogue withdrew her opposition to Jenner’s application for serial nos. 86584742, 86584756, and 86755582 on January 19, 2017.

So what is actually happening? And why the ruckus?

The news should be focusing on Jenner’s appeal of the USPTO’s July 22, 2016 final refusal of mark serial no. 86810719, which was filed in November of 2015—and has nothing to do with Minogue.

Kylie Jenner: “Used under Creative Commons License via Disney ABC Television Group. Some rights reserved.”

Originally the subject of an Office Action in December of 2015, the USPTO most recently rejected registration of the “Kylie Jenner” for likelihood of confusion with mark Reg. No. 4166624, “Kylee.” Both marks claimed International Class 025, which includes clothing and accessories. The “Kylee” mark, belonging to Mimo Clothing Corporation, asserts first use in April 2011 and covers “Belts; Blouses; Bras; Capris; Cardigans; Coats; Corsets; Coveralls; Denims; Dresses; Footwear; Gauchos; Gloves; Gowns; Hats; Jackets; Jerseys; Jumpers; Leggings; Lingerie; Overalls; Panties; Pants; Ponchos; Scarves; Shirts; Shoes; Shorts; Skirts; Socks; Suits; Sweaters; T-shirts; Tank-tops; Tights; Tops; Uniforms; Vests; [and] Wrist bands.” Registered July of 2012, the “Kylee” mark is up for Sections 8 and 15 filings in 2017.

Jenner filed her application for “Kylie Jenner” in 2015, long after the “Kylee” mark’s registration. Upon review, the USPTO determined that “Kylee” and “Kylie Jenner” were 1) too similar, 2) in related categories, and 3) would create a likelihood of confusion with consumers. The final refusal, preceded by a non-final Office Action, issued last July. Jenner’s team filed an appeal to the Trademark Trial and Appeal Board (TTAB) on January 23, 2017 to fight the rejection. A full-fledged TTAB proceeding will follow. Apparently, the appeal got the attention of media outlets across the globe, (as any Kardashian news tends to do) resulting in incorrect blame-placing on Australian-based Minogue from halfway around the world.

As of the writing of this article, Minogue has not issued a statement.

The moral of the story — don’t trust everything you see on the news. Especially if it’s about a Kardashian.

Over the holiday break the United States Court of Appeals for the Federal Circuit, a specialized appellate court with jurisdiction over certain intellectual property matters, issued a significant ruling concerning the criteria that the United States Patent and Trademark Office (USPTO) may use to decide whether to issue a federal trademark registration.  The Lanham Act–the federal law authorizing the issuance of nationwide federal trademarks–excludes from registration eligibility any mark which is “disparaging” to a person or group of people. Many legal experts have wondered how a law that, by its express terms, calls on the government to discriminate based on the viewpoint expressed by a private person can withstand constitutional scrutiny under the First Amendment’s free speech clause.  The Federal Circuit has now ruled that it cannot, holding that the “disparagement” clause requiring denial of a trademark registration is unconstitutional.

Continue reading “Lanham Act “Non-disparagement” Rule Unconstitutional, says Federal Circuit” »

A few weeks ago, I discussed the legal significance of patent markings on products sold in the United States. That article raised a more basic question among some readers: “What is a patent?”  In this post, I discuss the reason the United States issues patents, how to determine whether your invention is patent eligible, and how to understand the different parts of a United States Patent.

The U.S. Constitution Provides the Reason we Grant Patent Rights

The American Founders decided to grant patents in order to spur economic growth and to encourage inventors to reveal their discoveries to the public.  Thus, Article I, section 8, clause 8 of the United States Constitution authorizes Congress to allow for patent rights, or limited time monopoly rights for inventions, stating that Congress has the power

To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.

Continue reading “Reading and Understanding a United States Patent” »

Have you ever seen a patent notice like “U.S. Patent Pending” or “U.S. Patent No. 1234567” and wondered about its implications?  Could it be used to scare off potential competitors, or does it have some deeper legal importance?  Under federal law, which governs all things patent, patent marking actually plays an important role in patent infringement suits.  This article reviews the reasons for marking a product with a patent, the kinds of markings that are legally sufficient under the law, and the practical implications for patent owners and possible infringers alike.

Is a Patent Marking Legally Relevant?

A patent marking is legally relevant.  Not just a deterrent, it serves to provide constructive notice to a potential infringer that the item is patented or patent pending.  This means that the law imputes notice to an infringer, even if the infringer never actually saw the patent marking.  Notice of some kind is required under United States Code, Title 35, section 287 before a patent holder may bring an infringement action.  There are two kinds of notice: actual and constructive.  Actual notice occurs when someone tells an infringer about their infringement, like, for instance, when a patent holder sends a demand letter.  Constructive notice occurs when a patent holder properly marks their patented product.  If infringement occurs after either of these events, the infringement is actionable in federal court.

Continue reading “Understanding Patent Markings” »