Looks like Kanye, Kawhi, and Kylie have all been getting familiar with the United States Patent and Trademark Office (USPTO) and the process of obtaining trademarks.
Let’s take a look:
Kawhi Leonard, who ran into some trademark issues with the Nike and the ownership over the “Klaw” logo and trademark, has taken the affirmative acts to register two trademarks “What It Do Baby” and City Views Over Interviews”, both in connection with a clothing brand.
The phrase “what it do baby” went viral after Kawhi said the phrase on an IG video after the Raptors won the championship last season. We’re a little less clear on the origin of the other phrase, but it’s speculated that it has something to do with Kawhi’s love for his hometown.
Kawhi filed both phrases as an Intent to Use based application as he has not yet begun to use the phrases in connection with his clothing brand yet, but he has them on reserve for when he does.
Kanye West, who has recently made a change in his music to only produce gospel, attempted to obtain federal trademark registration for “Sunday Service” for clothing and other fashion apparel. His trademark was recently denied based on a prior registration “Sunday Service Collective” which was registered in connection with entertainment events, live music in a club, organizing and arranging exhibits for entertainment purposes. Interestingly enough, the trademark office did not cite other pending marks (e.g. The Sunday Service Collective and The Sunday Service), which while not exactly the same mark, both marks were applied for in connection with clothing and apparel, which are the exact same goods associated with Kanye’s application.
Here, the USPTO found that the connection that the average consumer would make between Kanye’s entertainment services, would be likely to cause confusion with a registered mark already in existence that is associated with entertainment services.
When determining whether or not a mark is likely to cause confusion, the USPTO performs a factor analysis test and examines the following:
- the strength of the mark
- the similarity of the mark
- the similarity of the goods and/or services associated with the mark
- similarity of marketing channels used
- evidence of actual consumer confusion
- wrongful intent
- sophistication of the purchasers
No one factor is dispositive, so each situation is determined on a case by case basis, however the similarities between the marks and the relatedness of the goods and/or services are key considerations in any inquiry into the likelihood of confusion. In Kanye’s case, the USPTO found that the marks were identical and although the goods and services were not, they were related in the sense that Kanye also provides entertainment services as well, and meet the benchmark for likelihood of confusion.
Kylie Jenner is looking to cash in on a video that went viral of her singing “Rise and Shine” to her daughter. Kylie filed 2 separate applications: “riiise and shiiinnee” and “rise and shine”. A look through the USPTO records reveals quite a number of applications (some pending and others registered), with the exact same verbiage or something very similar, and some of which have goods and/or services in the same classes of goods as applied for by Kylie.
Her lawyer seems to be under the belief that the misspelling of the “riiise and shiiinnee” will help to defeat refusals, but the law is clear that phonetics trump spelling and the confusion may lie in what the mark sounds like to the consumer and not only what it looks like on paper. Kylie has already been receiving a lot of backlash with regard to the proposed trademark, so I can only imagine that if she makes it to the publication period, she will be flooded with oppositions at that time.
I’ll keep a close watch on these trademark matters and update you of any new findings. It’s never a dull moment with celebrities and trademarks.
Lerae Funderburg, Esq. is the Managing Attorney at Funderburg Law, LLC, an Atlanta based entertainment, business and intellectual property law firm. Lerae has 10 years of legal experience. As a business and intellectual property lawyer and blogger, Lerae keeps her viewers and subscribers up to date with entertainment law news, especially in the areas of music, copyright law and trademark law. If you are local to Atlanta, call and set up a consultation! She would love to hear from you!