Trademark dispute between Kylie Jenner and Kylie Minogue is a classic example of “confusingly similar” marks

There’s more than one “Kylie” in town, but Kylie Minogue isn’t giving up her “Kylie” trademark protection without a fight.

Long before “Keeping Up With the Kardashians” became a television sensation, singer Kylie Minogue had hit sings such as “The Locomotion” and “Come Into My World.”  She has even owned the website “www.kylie.com” since 1996.  In 2006, Minogue trademarked “Kylie” in conjunction with the sale of certain types of goods (such as jewelry and dolls) and printed materials.   However, when the Twitter and Instagram generation hear “Kylie” they are more likely to think of Kylie Jenner, the half-sister of Kim, Khloe and Kourtney Kardashian (the “Kardashians”).

In April 2015, Kylie Jenner filed a trademark application to register “Kylie” in connection with providing “advertising services.”  After the United States Trademark and Patent Office (“USPTO”) allowed Jenner’s application to be published, in February 2016, attorney’s representing Minogue filed an opposition.  In the opposition (click here for a copy), Minogue not only argued that she had priority over Jenner, but that there would be a likelihood of confusion if Jenner’s mark was registered.  Minogue further argued that Jenner’s target customer and consumer base overlapped with Minogue’s customers and consumer base.  The idea is that those persons familiar Minogue’s “Kylie” trademark would likely be confused, mistaken or deceived by Jenner’s use of “Kylie.”  The dispute had all of the hallmarks of a big trial before the USPTO, but that day never came.

Despite news reports this week that the USPTO had issued a decision in favor of Minogue, the dispute was resolved.  On January 26, 2017, Minogue’s opposition to Jenner’s application was dismissed, without prejudice.   We may never know the terms of the settlement, but the “Kylie” trademark dispute is an excellent example of the need to complete a thorough trademark search prior to submitting an application to the USPTO.  A thorough search can identify “confusingly similar” marks.  If an application is filed, the applicant should be very careful to distinguish the goods and services being offered from those being offered by the owner of the similar mark.

A Motion for Sanctions is an EFFECTIVE Tool to Defeat

Published in Community Associations Institute’s May/June 2013 issue of Focus Magazine A lawsuit filed against a homeowners association, even when frivolous and brought in bad faith, can have a devastating effect on an association’s limited funds. When a frivolous or bad faith lawsuit is filed, a homeowners association should consider the use of a motion for sanctions under California’s Code of Civil Procedure (“CCP”) section 128.7. This statute was enacted to protect against abuses of the legal system, and can be a highly effective tool to compel a plaintiff to voluntarily dismiss a lawsuit which…

Raging Bull Supreme Court Decision

Glen Kulik represented the appellant before the United States Supreme Court in Petrella vs. MGM, which resulted in a a reversal in favor of the firm’s client in a copyright infringement case that many experts have heralded as one of the most significant copyright decisions in the past 50 years. Ms. Petrella’s father wrote the original screenplay for the famous motion picture Raging Bull and the copyright reverted to her family at the end of the initial 28 year copyright period. In the lawsuit she was seeking to prove that the continued exploitation of the movie by MGM infringed her copyright. The trial court held that there were disputed issues of fact on the substantive copyright issues but that she waited too long to bring the suit and thus it was barred by the doctrine of laches. The Supreme Court reversed and in so doing resolved a serious conflict between the various federal appellate court circuits and reversed the long-standing rule in the Ninth Circuit which had barred the action. The Court held that a copyright claim brought within the applicable three year statute of limitations cannot be barred by laches.

Court of Appeal Decision

On June 19, 2013, Len Siegel, Tom Ware, and David Bernardoni secured a Court of Appeal decision upholding the trial court’s sustaining of a homeowner association’s demurrer to homeowners’ complaint seeking to hold the Association liable for in excess of $200,000 in damages arising out of engineering errors in the homeowners’ architectural application. The victory on appeal is significant inasmuch as many of the issues raised in the complaint were matters of first impression which if decided in plaintiffs’ favor could have increased exponentially California non-profit homeowners association’s exposure in connection with processing homeowner architectural applications.

This matter presented the issue of whether a non-profit homeowners association owed a duty to indemnify members for damages arising from the members’ own professional engineers’ erroneous grading plans submitted to the association’s lay art jury. Currently, there is no legal authority that would impose such a draconian obligation. Nonetheless, plaintiffs sought to create an unprecedented duty that would make their neighbors, who comprise such associations, voluntarily serve on their boards and committees, and fund their operation, the guarantors of the architectural applicant’s own professional engineering reports. Plaintiffs admitted that their lot was constructed seven feet above the elevation depicted on the plans approved by the Association’s lay architectural art jury as a result of incorrect elevations depicted in the engineering plans. When their neighbors discovered this error, the neighbors successfully filed a lawsuit compelling plaintiffs to remove the home, which infringed upon their views, and recovered over $200,000 in attorney’s fees. Plaintiffs sought to recover the cost to remove the structure and the $200,000 paid to the neighbors from the Association based on plaintiffs’ claim that the lay art jury negligently failed to discover the engineering errors. Unbeknownst to plaintiffs, the art jury reviewed a prior architectural submission by the neighbor which reflected the correct elevation of the neighboring lot. As a result, the Association approved the plans under the belief that there was a 25 foot height differential between the two properties as opposed to the 18 foot differential depicted in plaintiffs’ plans. Plaintiffs claimed that the Association acted unreasonably in doing so, and in failing to disclose to them that the approval was based on a 25 foot differential not the 18 foot height differential proposed in plaintiff’s plans. We argued that there were no such duties. Plaintiffs, however, tried to convince the Court to extend the duties imposed on Associations to protect the rights of the “neighboring” properties when reviewing architectural applications (Cohen v. Kite Hill Cohen v. Kite Hill Community Association (1983) 142 Cal.App.3d 642) and the obligation to adopt and follow “reasonable” architectural review procedures (Civil Code § 1378) to impose an obligation on the Association to verify the accuracy of the applicant’s architectural submissions. The Court of Appeal refused to do so.

Rather, the Court held that neither the CC&Rs, Section 1378, nor common law imposed an expressed duty on the Association to verify the accuracy of plaintiffs’ erroneous architectural submissions. The Court clarified that Section 1378 imposed an obligation to adopt “reasonable” procedures and the Association is required to comply with these procedures. However, Section 1378 does not include a duty of “reasonableness” requiring the Association to engage in conduct not specifically mandated by the CC&Rs. Furthermore, the Court clarified that the fiduciary duty imposed on associations in Cohen to enforce the governing documents in order to protect the neighboring property interests did not extend to the applying owner, particularly where as here the plaintiffs can point to no provision which was expressly violated by the Association. With respect to this latter point, the Court held that the Association could not be characterized as a joint tortfeasor with plaintiffs vis-à-vis plaintiffs’ neighbors because the Association owed no duty to the neighbor to find an engineering error, notwithstanding Cohen, because the CC&Rs did not contain an express duty on the Association to protect the neighboring owners’ view rights.

Although the case was not published, the decision is impactful beyond the parties to the action as the Court refused to create new precedent that would have dramatically increased homeowners association’s potential liability in reviewing architectural plans.