UPDATE (04/3/2017): The Trademark Trial and Appeal Board has sustained the Kardashian’s Notice of Opposition after Blac Chyna failed to respond to the pleading. In the Notice of Default Judgement, the TTAB held:
On January 20, 2017, the Board issued a notice of default to Applicant because no answer had been filed. No response to the notice of default has been filed. Accordingly, judgment by default is hereby entered against Applicant, the opposition is sustained, and registration to Applicant is refused. See Fed. R. Civ. P. 55(b), and Trademark Rule 2.106(a).
Original content printed 12/15/2016:
Love them or hate them, there is no denying that the Kardashian family has developed a massive brand in the “Kardashian” name. That did not stop their soon-to-be-sister-in-law, Blaq Chyna from applying to register the name “Angela Renée Kardashian” with the United States Patent and Trademark Office for entertainment-related services. Blaq Chyna, a model and entrepreneur, is engaged to Rob Kardashian and believes that the pending nuptials give her the right to register the “Kardashian” name with the U.S. government.
On May 3, 2016, Blaq Chyna’s company Lashed LLC filed a trademark application with the USPTO to reserve rights in the “Angela Renée Kardashian” trademark under an “intent-to-use” application. The application was approved by the government attorney assigned to the application. While this seems like it might be an obvious oversight by the USPTO, when looking at the KARDASHIAN trademarks that are currently registered, it appears that they are owned by a variety of different companies. This is significant because when multiple companies hold registrations that share a similar word, that similar word becomes diluted and the addition of other elements (like “Angela Renee”) may be sufficient to distinguish the marks.
Regardless of the reasoning, the USPTO approved the application for registration and, once the mark published for opposition (a period of time in which a third party can challenge a trademark), the Kardashian’s filed a Notice of Opposition against the application. This kicks off an administrative court case, wherein both sides will plead their cases and the Trademark Trial and Appeal Board will decide whether the trademark can be registered.
When looking at the case as a whole, it seems that Blaq Chyna will have an uphill battle to register the name. Nevertheless, her attorneys would be wise to look at the ownership structure for all the other ‘Kardashian’ based trademarks and determine if the registration by multiple entities has weakened the mark enough to allow Blaq to register her version of a ‘Kardashian’ trademark.
With that said, the one thing that would be clear in this case is that trademark law does not permit you to use your name as a trademark in a way that would likely be confusing to consumers. If my name is Ralph Lauren, I could be liable for trademark infringement for opening a shoe-store called “Ralph Lauren Shoes.” Courts have long established that, yes, you can be prevented from using your own name as a trademark. In 1989, Ernest and Julio Gallo won a court case against their younger brother, Joseph Gallo, and forced him to stop using the “JOSEPH GALLO” trademark on cheese. The court held that “if every person named Gallo were entitled to use Gallo as a consumer trademark, Gallo might be adopted as a trademark on any imaginable product.” “Such proliferation of uses,” the court held, would “destroy the unique nature of the Gallo brand, its distinctiveness and its commercial value.”
Therefore, the only sliver of hope that Blaq Chyna might have is if she can prove that the various companies who own “Kardashian” marks do not actively work together to protect their marks. As mentioned earlier, when multiple companies are sharing a word in their trademarks, then they can be more easily distinguished. If Rob Kardashian owns one company (Kardashian Inc.), Khloe owns another (Khlomoney Inc.), and Kim owns a third (Kim Inc.), and the three have no guidelines or agreements to dictate how the Kardashian name will be used, then Blaq Chyna may be able to argue that she, too, should be able to use the Kardashian name with the signifier of “Angela Renee” before it.
How does this effect the rest of us? It is a cautionary tale for small business owners and start-ups about selecting and registering a trademark. If you choose a trademark that is too similar to someone else’s, even if you obtain USPTO approval, your application can be challenged in court.