While we spend a lot of time stressing the importance of copyrighting artistic works, it’s also important for artists to consider registering a trademark on a very identifiably important aspect of their work: their name. Why would an artist want to trademark their name? Because trademark laws govern the naming rights and goodwill of a brand, while copyright laws only protect creative work. Before trademarks, two or more entities could have the same name and sell the same types of products, making it difficult for consumers to distinguish the two. Instead, trademark law reduces the “likelihood of confusion,” by allowing only one entity to use a specific name for a particular brand. As an artist, you would want to trademark your name in order to prevent anyone from using your name in a way that dilutes or sullies your brand. In addition, you may want to trademark your products or services, which we’ve discussed in detail on Art Law Journal.
But what are the requirements to trademark your name? How do you register a trademark? And once you do, can your trademark be challenged?
Registering a Trademark
Once a trademark has been registered, you own the exclusive right to the use of your name. Anyone who uses your trademark without permission will be liable for damages. While you register a trademark at the state level, it’s a much better idea to do so at the federal level for added protection. The United States Patent and Trademark Office manages the registration of trademarks, the fee for registration is $225.
Before you can register your trademark, you’ll need to prove ownership. If you’re registering your name or pseudonym, you will need consent from the owner of the name – in this case, you – in order to register the trademark. As you might have already guessed, its in your best interest to register a trademark as soon as possible, since it’s extremely possible that someone might beat you to the punch if you have a very common name (think Tim Walker, for example.)
Next, you’ll need to demonstrate your basis for filing. The basis for filing is identified by actual use or intent-to-use filing. If the filing is based on actual use, then you’ll need to show how your name has been used in commerce. For example, a photographer who generally watermarks his images would want to submit those images along with the request. In addition, use of the name in advertising services will be sufficient to show actual use. If you’re filing an intent-to-use application, it’s enough if you make a good faith statement that you plan to use your trademark name in commerce. But, you will need to use the trademark in commerce before the trademark can be actually registered.
After you’ve determined your use and basis for filing, you’ll need to classify which categories your name falls under. There are 45 classes for trademark categories, which the USPTO uses to keep track of the thousands of new trademarks being registered on a daily basis. Determining which class your mark falls under is extremely important in the trademark registration process – select the wrong one, and your application will be cancelled and your fee won’t be returned. Luckily, each class has a long list of potential uses to guide you through the process.
Lastly, before the trademark can be officially registered with the USPTO, the agency must alert the public to its filing in case there is any opposition contesting the trademark. The trademark must be published in the Official Gazette, a weekly publication by the USPTO. In turn, the USPTO will send a notice of publication to the applicant. After the trademark is published in the Gazette, any party who believes it may be damaged by registration of the mark has 30 days from the date of publication to file either an opposition to the registration of the trademark or a request to extend the time to oppose. If the trademark is opposed, the issue goes before the Trademark Trial and Appeal Board.
So what happens if someone opposes your trademark? How does the Trademark Trial and Appeal Board decide the issue? Let’s consider one very public example.
The Kylie vs. Kylie Debate
Reality TV star and sometimes model Kylie Jenner has registered various trademarks for her name, including “Kylie Jenner” and “Kylie.” But another – arguably more famous- Kylie has asked the star to pump the breaks. International celebrity Kylie Minogue’s legal team is claiming that the pop singer and activist has been in the spotlight far longer than Ms. Jenner, and therefore does not have the right to trademark the Kylie name. In its opposition, Ms. Minogue’s legal team stated that “if the USPTO approved Jenner’s application then it would cause confusion among consumers between the two Kylies and dilute her brand,” additionally alleging that Jenner is a “‘secondary reality television personality,’ who has received criticism from disability rights groups and African-American communities.”
While it may seem that Ms. Minogue’s team is merely insulting Ms. Jenner for fun, the allegations are key to opposing a trademark. Remember, the goal of a trademark is to help consumers easily identify between brands. According to Ms. Minogue’s legal team, Jenner’s use of the trademark Kylie would bring into question the quality of Minogue’s brand, since Minogue has released 13 albums since 1988, has been nominated for a Grammy 15 times (and won once!), has her own clothing line, is an active philanthropist and activist for breast cancer research, and is internationally recognized across Europe, the Americas, and her home country of Australia. Simply put, Minogue is a bigger star – and the questionable antics of the Kardashian’s youngest sister would most certainly confuse consumers of the Kylie brand.
Why Trademark Class Matters in Opposition Situations
The Kylies war revolves around the class that each artist is attempting to register their trademark under since both are registering ‘Kylie’ for education and entertainment. But what about other classes? Would Jenner be prevented from registering Kylie under another class? Maybe. That issue would turn on whether the term Kylie is confusingly similar to an already existing trademark. Would a consumer confuse Kylie the entertainer with Kylie the sneaker? How would a consumer know which Kylie is which?
Determining “confusingly similar” is often complicated, even though the answer may seem obvious. Courts will look at all the elements of a product together and decide whether a general everyday consumer would be confused and think they are buying something else. For example, let’s look at the use of a trademark on Barbie. Barbie sells dolls, but she also sells clothing, sneakers, and toy cars. If a company were to sell a Barbie mobile, with the Barbie name and logo on it, then a consumer would likely be very confused about whether or not the product was an actual, trademarked Barbie toy. In this case, a trademark for Barbie across classes would likely be enforced, preventing any company from using it for any other purpose.
In Kylie vs. Kylie, whether or not the name and associated celebrity would confuse consumers enough remains uncertain. The same can be said for any artist trying to trademark their name – but wouldn’t you rather rest assured that your trademark is registered? As an example, a photographer whose images are trademarked would have a legal claim against Café Press, a company that often steals photographer images for printing on t-shirts and coffee mugs. Chances are, a registered trademark of your name would help you prevail on legal claims, and that’s money you simply can’t afford to lose.