The Kardashians + Trademarks: A Lesson on the “use in commerce” requirement

On February 12th and 13th, 2019- Kim and Khloé Kardashian along with their sister, Kylie Jenner filed trademark applications  to secure the names of their children: North West, Saint West, Chicago West, True Thompson and Stormi Webster. These applications were filed to be used in connection with various goods and services, including toys, skincare products, clothing, personal appearances, endorsement services and retail stores.

Under Section 1(a) of the Trademark Act, a trademark may only be successfully registered if the applicants proves current use of trademark in interstate commerce. In other words, you must be selling goods and services across state lines. In order to prove this, applicants must submit specimens that show conclusive proof to the United States Patent and Trademark Office (USPTO) that they are indeed using the trademark in connection with the goods and services listed in the application.

As it pertains to the Jenner/ Kardashian ladies, it seems as if they were not yet able to prove that they were currently using the trademarks in connection with the listed goods and services, and therefore, they could not file under Section 1 (a) of the Trademark Act. 

If an applicant is unable to prove “use in commerce” when filing, they can opt to submit what is called an “intent-to-use” application under Section 1(b) of the Trademark Act. This would tell the United States Patent and Trademark Office (USPTO) that the applicant has a bonafide intention to use the trademark in commerce in the near future. Furthermore, the filing of such an application allows the applicant to reserve rights to the trademark, before they even use it since they will obtain a priority date that precedes the date of actual use in interstate commerce.

Many celebrities seek trademark registration for their names and their children’s name in an attempt to prevent third parties from using them for commercial gain without their authorization. For example in 2013, rap mogul Jay-Z told Vanity Fair that he sought to protect his daughter, Blue Ivy Carter’s name to prevent unauthorized third parties from commercially exploiting it. Unfortunately, these applications were unsuccessful twice over. In the first instance, Beyonce and Jay-Z were not able to prove use in commerce for the goods and services listed in the application and the second time around, an event planner opposed the registration of the mark because she had already registered the word mark "Blue Ivy" for marketing and event planning services.

One cannot underestimate the importance of the “bonafide intention to use” requirement under Section 1(b) of the Trademark Act. In the past, many trademark applications filed by celebrities have been abandoned due to their failure to actually use the trademark. As noted by The Fashion Law, “the celebrity practice of running to the USPTO to register their kids’ names is not as straightforward as it may seem. For celebs that will not be able to show that their kids’ names are actually being used in commerce, such filings might be little more than a fruitless effort and a legal bill.”

Considering that the Kardashians have a long-running hit reality TV show, proving use in commerce for “entertainment services, namely, personal appearances by a celebrity” may not be difficult. On the other hand, will there be clothing lines, skin care products, toys and retail stores bearing the names of North West, Saint West, Chicago West, True Thompson and Stormi Webster? We shall see.... because only if these endeavors come to fruition will their marks be eligible for trademark registration. 

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