By Melinda Upton and Claire Kermond (Sydney)

In the retail and fashion industries, names and marks are a key element of the marketing strategies and longevity of brands.  Using generic marks or names can land retailers and fashion designers in trouble when it comes to successfully trademarking and protecting their brand.

Generic marks routinely face certain issues when being registered as trademarks.  Indeed, marks that are merely descriptive of the goods and services covered by the application are often refused registration.  Fashion designers and celebrities can also encounter the same issues when using their name as a brand or to market a product, particularly when their name is already associated with a well known public figure or is a common name and not unique in the eyes of the Trademark Office.

Kylie Jenner faced these issues when applying to register KYLIE JENNER as a mark in the United States.  Her application was refused registration by the US Patent and Trademark Office due to a likelihood of confusion with a prior mark for KYLEE.  Jenner recently filed an appeal with the Trademark Trial and Appeal Board over the refusal.

This is not the first time Jenner has had issues in successfully trademarking her name.  The artist Kylie Minogue, who owns US trademarks for her perfume, Kylie Minogue Darling, and has used the name KYLIE in relation to jewelry, in addition to her entertainment products, was quick to oppose Jenner’s application.  Minogue argued that consumers were likely to be confused about the source of the goods and services being offered and that Minogue’s brand would be damaged if it were associated with Jenner. Ultimately, however, Minogue withdrew her opposition.

When creating a brand identity for a product or a design, retailers and fashion designers should keep in mind that trademarks used in association with their brand should be chosen carefully.  For brands and designers who are still garnering reputation this is especially important.  The use of a generic mark or a popular name can leave them vulnerable to others using the name for similar products.  Strategically selecting a unique name will go a long way in ensuring long-term success of the brand and effective brand management.