Trademarks in the Entertainment Industry
Anastasiya Kryukova is a J.D. candidate, 2021 at NYU School of Law.
Celebrities have been making use of
the protections that trademark law offers for many decades now. In the 1980s,
Madonna became one of the first celebrities to consult trademark law to protect
her likeness rights. Another prominent trademark case was a battle in 1998
between Elvis Presley’s estate and “The Velvet Elvis,” a Houston bar that sought to maintain its name.
While the traditional understanding of trademark doctrine applies most
seamlessly to tangible goods or services, many current-day celebrities have
begun to follow in Madonna and Elvis’s footsteps in seeking protection of their
identity and likeness.[1]
The 2000s saw a significant rise in “influencer culture” across various social media channels, as well as personal branding. There is no exhaustive list of defined attributes that are capable of being trademarked. Indeed, almost anything that carries meaning[2] and serves as a designation of source is capable of being trademarked. Outside of federal trademark law, the right of publicity also protects an individual’s sole right to profit from their value which they have achieved, at the state level.
So why
do celebrities feel the need to trademark their names, identities, phrases, and
even the names of their toddlers? One reason is that trademarking is a way for
celebrities to make a profit off themselves.[3] [4] Additionally, if they (or their children) did have
plans to release products or services in the future, filing an Intent to Use
application under Lanham Act §1(b) would allow them to reserve the mark for
future use. This leads us into the second reason celebrities trademark their
names and phrases—namely, to prevent others from profiting unfairly off their
identity.[5] For example, young climate activist Greta Thunberg has filed
to trademark her name as well as her #FridaysForFuture
movement. She has reportedly explained that she has no interest in profiting
from her trademarks, but merely wanted to prevent others from using her cause
for commercial purposes and without consent.[6] The section below will discuss various trademark
filings, and will identify the United States Patent and Trademark Office’s
(USPTO’s) reasons for either issuing approvals or rejections.
Celebrities trademarking their own names is nothing new. Beyoncé, Rihanna, Justin Bieber, Katy Perry, Taylor Swift, Victoria Beckham, President Donald Trump, Melania Trump, Katy Perry, and Bruce Springsteen have all trademarked their names.[7] Rumored to have a net worth of $1 billion,[8] Kylie Jenner has built an impressive empire in the realm of beauty products. She already “owns trademarks on Kybow, Kyliner, Glitter Eyes, Kylie Baby, Lip Kit, Kylie Museum, Kylie Kon and many more,” and has additionally filed for trademarks on ”Kylie Body” and ”Kylie Body By Kylie Jenner.”[9] Interestingly enough, the USPTO rejected Kylie’s attempt at trademarking simply “KYLIE JENNER” for clothing, on the basis of a reverse confusion theory. This doctrine allows less known senior users of a mark to protect their trademark from commercially strong and well known junior users. Apparently, a company by the name of Mimo Clothing Corp. had already registered the mark “KYLEE” for various clothing items, and the UPSTO judged these marks to be too similar, since they are indistinguishable phonetically.[10] Additionally, Kylie had faced another potential suit from an Australian singer’s company, for “KYLIE COSMETICS,” though the company later withdrew its opposition.[11]
Kylie has also applied
for trademarks relating to her daughter’s name, though here too, she was
opposed. Business Moves Consulting, a New Orleans clothing company had
trademarked “Stormi Couture” a month after Kylie’s baby was born, and claim
that Kylie’s proposed trademark of “Stormi
World” is too confusingly similar.[12]
Ironically enough, this was the same company that was sued by DJ Khaled in in
2018 “for allegedly using trademarks related to him and his infant son to
attract web traffic!”[13]
Another
example of this modern trend is Jay-Z and Beyoncé, who had filed to trademark
the name of their daughter, “Blue Ivy Carter,” calling her a “cultural icon.”[14] [15] The USPTO denied the application on the grounds that they
were unable to show actual use of the mark.[16] The use requirement is one of the three basic requirements a
trademark must meet, to qualify for protection under US federal law.[17] Even if the filer chooses to file an Intent to Use
application, they are required to show a bona fide intent to use the mark in
commerce in the near future. This prevents frivolous filings, and ensures that
marks are claimed only those who will actually make use of them. Jay-Z and Beyoncé
faced another hurdle in their filing process. Veronica Alexandra, a wedding
planner in Boston, had registered the mark “Blue Ivy” for
her business back in 2009. The USPTO allowed Alexandra to continue using Blue
Ivy for event planning.[18]
Names are not the only things celebrities trademark. In 1992, boxing announcer Michael Buffer was able to trademark his phrase, “Let’s get ready to rumble,” later selling his rights to the phrase for $400 million! Paris Hilton famously trademarked “That’s Hot,” while Taylor Swift trademarked, “this sick beat,” “party like it’s 1989,” and ‘cause we never go out of style,” from her 1989 album. Emeril Lagasse, a celebrity chef, was even able to trademark the single word “BAM!,” though only for products relating to cooking.[19]
However,
not all celebrities received good news. TV personality Nicole Polizzi was
unable to trademark her stage name “Snooki,” because a previously trademarked
children’s book cat character—“Snooky”—was apparently likely to cause consumer
confusion.[20] Cardi
B’s application to trademark her phrase “okurrr” was also denied, on
the grounds that the phrase was too commonplace and well-recognized to serve as
a designation of source.[21]
Earlier this month, Lebron James’s company was accused of trademark
infringement by a youth development organization, for James’s use of the phrase
“I am more than an athlete.”[22]
Danielle Bregoli, an internet personality perhaps more famously known for her
stage name, Bhad Bhabie, has filed to trademark her signature phrase, “CASH ME
OUTSIDE HOW BOW DAH.” Currently, the application has been published and so far has
not been opposed.[23]
Meanwhile, Danielle’s company has been bringing legal action against companies
that make commercial use of these phrases.[24]
Unsurprisingly, Kylie Jenner too has not missed the train on trademarking
phrases. After her viral video in 2019, Kylie quickly filed to trademark “Rise
and Shine.” A New Jersey businesswoman, Cathy Beggan has since some forward
claiming to have owned and used the mark “Rise-N-Shine” for her vitamin and
cosmetics company since 2006. Beggan claims that Kylie’s use of the mark for
profit infringes on her company’s rights to the arguably similar mark, in the
same industry that Kylie intends to sell her branded products.[25] Celebrities have even succeeded in trademarking
movements. New York Jets quarterback Tim Tebow recently trademarked a move
referred to now as “Tebowing,” which involves him going down on one knee with a
clenched fist during prayer.[26]
Overall, given our current-day fascination with social media, the widespread reach of the internet and news coverage, and the ever-present desire to expand personal businesses, it is likely that the rush to the USPTO office will not stop anytime soon. In fact, given the wide array of attributes that have been successfully trademarked, it would not be unreasonable to predict that celebrities will continue to submit more eclectic and creative filings in the future.
[1] Kaitlyn Tiffany, Why Celebrities Try to Trademark Their Catchphrases and Baby Names, Vox (Apr. 19, 2019), https://www.vox.com/the-goods/2019/4/19/18507920/celebrity-trademark-history-baby-names-taylor-swift.
[2] Id.
[3] Id.
[4] Why Are Celebrities Seeking (and Often Failing) to Register Their Children’s Names?, The Fashion Law (Feb. 18, 2019), https://www.thefashionlaw.com/home/why-are-celebrities-rushing-to-trademark-their-childrens-names [hereinafter Children’s Names].
[5] Id.
[6] CBC Kids News, Greta Thunberg Wants to Trademark Her Name. Here’s Why, CBC (Jan. 31, 2020), https://www.cbc.ca/kidsnews/post/greta-thunberg-wants-to-trademark-her-name-heres-why.
[7] Judith Soto, All Are Equal In The Eyes Of USPTO: Celebrities, Sports Stars, and Trademarking Names, Trademark Now (Apr. 25, 2019), https://www.trademarknow.com/blog/celebrities-sports-stars-and-trademarking-names [hereinafter All Are Equal].
[8] Celebretainment, Kylie Jenner Poised to Expand Her Business Empire?, NBC Right Now (Feb. 21, 2020), https://www.nbcrightnow.com/lifestyles/entertainment/kylie-jenner-poised-to-expand-her-business-empire/article_1446c061-bfee-5519-888a-fec2f1402a49.html.
[9] Mara Siegler, Kylie Jenner’s ‘Stormi’ Trademarking Spree Thwarted by Clothing Company, Page Six (Feb. 19, 2020), https://pagesix.com/2020/02/19/kylie-jenners-stormi-trademarking-spree-thwarted-by-clothing-company/ [hereinafter Stormi Trademarking].
[10] All Are Equal, supra note 7.
[11] Id.
[12] Stormi Trademarking, supra note 9.
[13] Blake Brittain, DJ Khaled Adds Trademark Claims for Company’s Use of Son’s Name, Bloomberg Law (Apr. 30, 2019), https://news.bloomberglaw.com/ip-law/dj-khaled-adds-trademark-claims-for-companys-use-of-sons-name.
[14] Dan Hyman, Jay-Z and Beyoncé Lose Bid to Trademark ‘Blue Ivy’, Rolling Stone (Oct. 22, 2012), https://www.rollingstone.com/music/music-news/jay-z-and-beyonce-lose-bid-to-trademark-blue-ivy-67140/?cnn=yes.
[15] Ryan Naumann, Beyoncé Shades Wedding Planner in ‘Blue Ivy’ Legal Battle, Blast (Sept. 24, 2019), https://theblast.com/c/beyonce-blue-ivy-wedding-planner-trademark-jay-z-battle-response [hereinafter Blue Ivy Legal Battle].
[16] All Are Equal, supra note 7.
[17] Children’s Names, supra note 4.
[18] Blue Ivy Legal Battle, supra note 15.
[19] Chelsea Leary, The Most Bizarre Things Celebrities Have Ever Trademarked, Showbiz Cheatsheet (June 25, 2018), https://www.cheatsheet.com/entertainment/the-most-bizarre-things-celebrities-have-ever-trademarked.html/.
[20] Alana Horowitz, The 15 Most Ridiculous Trademark Attempts Ever, Business Insider (Apr. 8, 2011), https://www.businessinsider.com/15-ridiculous-trademarking-attempts-2011-4#check-out-more-fun-from-the-uspto-16.
[21] Carma Hassan, Cardi B Wanted to Trademark ‘Okurrr.’ The Patent Office Said ‘uh uh’, CNN (July 1, 2019), https://www.cnn.com/2019/07/01/entertainment/cardi-b-okurrr-trademark-trnd/index.html.
[22] Cedric ‘Big Ced’ Thornton, Lebron James and his Company Uninterrupted Accused of Trademark Infringement, Black Enterprise (Feb. 21, 2020), https://www.blackenterprise.com/lebron-james-interrupted-accused-of-trademark-infringement/.
[23] CASH ME OUTSIDE HOW BOW DAH Trademark Details, https://trademarks.justia.com/874/33/cash-me-outside-how-bow-87433913.html (last visited Feb. 23, 2020).
[24] Renee Rowe, Catch me outside? More like catch me at the bank., Medium (Feb. 15, 2018), https://medium.com/rta902/catch-me-outside-more-like-catch-me-at-the-bank-20b4ec0ce3ad.
[25] W. E. Messamore, Kylie Jenner Is on a Reckless Trademark Rampage and Must Be Stopped, CNN (Feb. 20, 2020), https://www.ccn.com/kylie-jenner-is-on-a-reckless-trademark-rampage-and-must-be-stopped/.
[26] Tim Tebow Prevails in Trademarking ‘Tebowing’, USA Today (Oct. 19, 2012), https://www.usatoday.com/story/sports/nfl/2012/10/19/tim-tebow-trademarks-tebowing/1645333/.
