Kylie Minogue has filed an opposition to Kylie Jenner’s attempt to register the KYLIE mark in connection with “Advertising services, namely, promoting the brands, goods and services of others; endorsement services, namely, promoting the goods and services of others,” claiming priority and likelihood of confusion, dilution by blurring, and dilution by tarnishment. The opposition calls Kylie Jenner “a secondary reality television personality” and seeks to draw a stark contrast between Kylie Minogue’s public activism in areas like raising awareness about the importance of early detection of breast cancer and raising funds for AIDS and Kylie Jenner’s “photographic exhibitionism and controversial posts  [that] have drawn criticism from, e.g., the Disability Rights and African-American communities.” That appears to be a reference to a recent magazine spread in which Kylie Jenner posed as a sex doll, with some photos of her in a wheel chair, and social media posts that ignited a heated debate over whether she was appropriating minority culture.

The tarnishment claim is particularly interesting. Tarnishment is the association of a mark with low quality products or something scandalous or socially unwholesome or unsavory, like sex or drugs. Generally the focus is on the product or services, and not on the people behind the tarnishing mark. But here, Kylie Jenner is the product. The services offered under the applied for mark are promotional in nature, most likely using Kylie Jenner’s fame as a “secondary reality television personality” turned model to promote the goods and services of others. So as the product, her actions in public may bring KYLIE into disrepute. This probably wouldn’t apply much outside of the realm of celebrities attempting to register their names as trademarks where they are the product or the face of the product. If Martin Shkreli owned a company that attempted to register KYLIE for a record label or jewellery, you may see dilution by blurring, but I doubt you would see tarnishment (for the record, both Kylies are actually operating under holding companies here).

The outcome could be particularly important for Kylie Minogue. It takes a lot work to make it into the group of entertainers known by a single name (Pelé, Madonna, Adele, Jordan, etc.). It’s probably more difficult when your name is somewhat common and not an adopted stage name like Bono, Flea, or Jay-Z (I count that as one name). Though I’m not sure that Kylie Minogue is at that one name level, it’s definitely easier if the field isn’t crowded. That’s where the dilution by blurring comes in.

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