Stars: They file trademarks just like we do! (Part 1)
Margo Cruz | August 23, 2020
Celebrity trademark applications serve many of the same purposes that any business entity’s marks do. Some celebrities file applications to protect their names and catch phrases, and others appear to file trademarks while they explore ideas. Still others have used the trademarking process to confirm that a phrase cannot be trademarked and is therefore safe to use. And of course, some celebrities file marks to register and use as source identifiers in commerce.
In this two-part series, we will use celebrity trademarks to analyze trademarking strategies, discuss how the USPTO process works, and show what makes a successful trademark application.
In Part 1, we will discuss celebrities who seem to file trademark applications for fun and celebrities who (attempt to) trademark their kids’ names, stage names, and more. These celebrities appear to file trademark applications just to see what sticks or to protect what is already theirs. With these come office actions on likelihood of confusion, and some potentially opportunistic individuals who try to reach the Trademark Office before anyone else.
Stand by for Part 2, where we will discuss anti-trademarking and legitimate use or intent-to-use trademark applications by LeBron James and Kanye West. These include an innovative trademarking strategy, potential genericide, and an interesting “likelihood of confusion” issue.
Trademark first, finalize later
Some celebrities appear to file trademark applications as a kind of vetting process—applying for marks first and only continuing to pursue registration where the mark registers easily or maintains popularity.
Kylie Jenner has filed over 200 trademark applications, of which she’s successfully registered dozens. Recently she attempted to register “RIIISE AND SHIIINNEE” following the phrase’s rise to popularity as a meme in October 2019, but she promptly abandoned the application after a 2(d) refusal. Read more about meme trademarks here.
The mark’s goods and services description included clothing items like footwear, jackets, and dresses, but it was considered too similar to already-registered “RISE ‘N SHINE” marks for perfumes, body oils, shampoos, and hair conditioners.
The detailed refusal states that the marks start and end identically and consumers are more inclined to focus on the first word in any trademark or service mark (TMEP 1207.01(b)). Furthermore, even though the identified goods and services listed are technically different categories, they “are presumed to travel in the same channels of trade to the same class of purchasers” (TMEP 1207.01(a)(i)). Read more about §2(d) refusals here.
This attempted registration may be part of a strategy to prevent others from using the meme commercially, or perhaps the application itself was meant to ward off other applications. Alternatively, Jenner’s team may have simply decided that the return on a trademark for “RIIISE AND SHIIINNEE” would not be worth the expense of fighting the office action and enforcing their rights, a process which is rarely simple.
Pro Wrestler Cody Rhodes is another celebrity who seems to use this strategy. After filing to trademark “SLAMBOREE” and “SUPERBRAWL,” Rhodes texted a friend that he had been awake “all night trademarking stuff” and later tweeted that he was getting ready to go to court (though the tweet has since been deleted). There was speculation that these applications were part of a trademarking battle between Rhodes, American Elite Wrestling, and World Wrestling Entertainment, Inc. (WWE), all of whom were filing trademark applications for wrestling-related event names around the same time.
The Rhodes trademark applications are still in early stages, so it remains to be seen what he will do with them. “SLAMBOREE” is subject to an extension of time to oppose filed by WWE, while SUPERBRAWL has received a section 2(d) office action for being confusingly similar to SUPER BRAWL, owned by Greg Cohen Promotions LLC.
Trademarking legal names, stage names, and personal brands
Celebrity trademarks of their own names and their kids’ names come with some interesting stories.
Cody Rhodes, Continued
Stage names and official names are protected under the Lanham Act (TMEP 813). Cody Rhodes attempted to “take back” his stage name trademark from WWE, which had trademarked Rhodes’s name at the start of his career in 2007. WWE let the mark’s registration lapse in April 2020, and Rhodes filed his own application to trademark the stage name. Then, on May 15, 2020, WWE filed a late renewal application, citing the pandemic as the reason for lateness. WWE’s renewal was approved. Rhodes commented on the situation in a Tweet, adding “It’s just business.” Rhodes has maintained a successful career independent of WWE, branding himself as just “Cody.” Rhodes does not work with WWE any longer, so it is unclear what WWE intends to do with the name.
International climate activist Greta Thunberg has filed trademarks in the European Union to protect her name and phrases associated with her climate movement. In December 2019, Thunberg applied to trademark her name, along with “FRIDAYS FOR FUTURE” and “SKOLSTREJK FÖR KLIMATET” (“School Strike for the Climate” in Swedish). The applications were filed by Stiftelsen The Greta Thunberg Foundation and successfully registered on May 25, 2020, according to the EUIPO’s application tracking timeline.
Imposter applicants may have prompted Thunberg and her family to trademark the phrases. Thunberg stated that she had no intention of using the mark in commerce, responding to some fans’ concerns that the trademark could indicate that she would profit from the climate crisis movement.
An application to trademark “FRIDAYS FOR FUTURE” in the United States was filed in March 2019, by one Michael Gsoedl in Germany. However, that application was administratively deficient in a number of ways and was abandoned following the first office action. It is unknown exactly how the USPTO would have responded if Gsoedl had maintained the application.
It is also unclear whether Thunberg’s applications would have been successful in the United States, as US marks have their own requirements including use as a source identifier for goods and/or services.
This spring, an individual in Taiwan filed an application for Kobe Bryant’s stage name, Black Mamba. Bryant’s estate was able to successfully argue against it, and the Taiwanese IP Court held that consumers there may still directly associate the name “Black Mamba” with Bryant.
In the United States, celebrities often appear keenly aware of the importance of protecting names early. Kobe Bryant himself applied to trademark “MAMBACITA,” a stage name for his daughter Gianna Bryant, in December of 2019, less than a month before their tragic deaths. The application owner is Kobe, Inc., and the mark received its Notice of Allowance on June 23, 2020. The application looks likely to be granted, assuming that Bryant’s estate continues to pursue registration.
It also appears that Bryant’s estate has recently applied for three trademarks: “M HALL OF FAME CLASS OF 2020, 24 8” (an image mark), “KOBE BRYANT,” and “KOBE 24 KOBE BRYANT” (an image including Bryant’s signature). Kobe Bryant, LLC is the listed owner on the applications. These Bryant trademarks appear to be intended to be used by his estate and legacy-related products. The goods and services descriptions include sports television programs and entertainment websites for children.
Beyoncé Knowles-Carter and Jay-Z Carter
Beyoncé and Jay-Z have also attempted to use trademarks to prevent others from using their children’s names for commercial purposes. The results of their trademarking process may indicate a shift in use requirements for trademarks. Beyoncé encountered difficulty registering “BLUE IVY CARTER” because of a wedding planning business called Blue Ivy Events. Though the Trademark Trial and Appeal Board (TTAB) recently decided in favor of Beyoncé, the legal battle dates as far back as 2012. Jay-Z’s admission that the pair had no intention to make commercial use of the Blue Ivy trademark was written-off as hearsay by the TTAB judges.
It is important to note that actual use requirements seem to differ between goods and services. According to one expert, “For a service mark, the services must be rendered at the time of alleged use to establish use, and mere advertising is not enough. For goods, it is acceptable if the public associates the mark and the goods, even if the goods are merely being advertised for an approaching distribution.” However, the recent TTAB decision about Blue Ivy’s name may indicate a shift towards less stringent use requirements.
Kardashian West and Jenner
Kim Kardashian West and Kylie Jenner have also utilized the trademark application process to protect their children’s names against commercial use, causing some to speculate that the trademarks are intended for use with future projects or even the kids’ own future influencer careers.
Meanwhile, Kylie Jenner has filed multiple applications in varied goods and services classes for her daughter’s name “STORMI WEBSTER,” as well as marks like “STORMI COUTURE” and “STORMI WORLD,” the theme of Stormi’s first birthday party.
Paris Hilton, who also is also a longtime friend of Kardashian West, trademarked her classic catchphrase, “THAT’S HOT” in 2007 and has maintained it to this day. The original specimen is surprisingly bare:
Given the prevalence of their trademark applications, it appears worth noting that as a group, the set of Kardashian/Jenner/Hilton influencers and socialites is aware of the value of IP protections.
When it comes to trademarks, It seems that celebrities are, once again, just like us. Some have sought out expert IP advice, while some receive little guidance from their attorneys, and some even appear to file trademarks for their own entertainment.
Come back next week for Part Two, where we will discuss anti-trademarking and genuine use or intent-to-use trademark strategies as employed by LeBron James and Kanye West.