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Case in Pop™

Case in Pop™ is a law blog providing a legal analysis of pop culture issues that impact the fashion, arts, entertainment, media & technology industries.

A Kardashian By Any Other Name: Can I Trademark My Last Name?

 
 

The Kardashian family is attempting to block Blac Chyna, otherwise known as Angela Renee White, from registering the name “Angela Renee Kardashian” as a trademark.  Can they do this?  Actually, yes! 

A trademark is a distinctive word, phrase, slogan, logo, color, sound, or scent (yes, scent!) that identifies the source of a good or service.  Such a mark is distinctive because when consumers see, hear, or smell it, they immediately connect it with a product or service.  Due to this, trademarks are very lucrative assets for companies because their brand becomes built upon the goodwill that is associated with the marks. 

Typically, marks that are primarily surnames (or last names) can be trademarked, but only on what is called the Supplemental Register.  The Supplemental Register is used for marks that are not distinctive, and placement on that register does not give the owner exclusive use of the mark. In contrast, marks placed on the more desirable Principal Register are able to be used exclusively by its owner, which allows the owner to prevent others from using it.  The reasoning behind this limitation is because typically, a surname is owned by many people (think “Smith,” “Williams,” or “Jones”), so by allowing Pamela Smith in New York to be the only “Smith” to trademark that name will bar Dustin Smith from using his own name for his business in Texas.  The law recognizes such a rule would not be fair to Dustin, Julia, or any other Smith that may come along, so it permits other Smiths to register their names as trademarks, but with limited rights.  There are a few exceptions to this rule, which are the arguments the Kardashians are using to oppose Blac Chyna’s registration. 

One exception is if the last name has “acquired distinctiveness” or “secondary meaning.”  This happens when a surname has become so famous that the general public recognizes the surname as not merely a last name, but associates it with a brand.  A surname that has attained this level of prominence can be moved to the Principal Register, which allows the owner of the name block all others from using it.  Additionally, if a surname is unique, it may not be necessary to prove that it has acquired distinctiveness–it may be distinct by its very nature.  Also, a person cannot register a surname if they are merely trademarking such the name to piggyback on the goodwill of that name’s reputation.  Such exceptions were the case in Gucci America Inc. v.  Jennifer Gucci et al., when Jennifer Gucci, the ex-wife of a Gucci executive, was prevented from using the name “Gemma by Gemma Gucci” for her jewelry line after Gucci claimed that she was merely using the mark to trade on the goodwill of the Gucci name. 

In the Kardashians’ opposition filing, they claim that they will “suffer damage, including irreparable injury to their reputation and goodwill” if Blac Chyna is granted the mark because the trademark registration will cause confusion among consumers and dilute the Kardashian brand. The Kardashians are in a good position to be successful in their filing.  The name is certainly famous, for better or worse.  Since launching on the scene about a decade ago, the Kardashians have ruled the spheres of reality television and social media; used their names and personas to sell clothing, jewelry, fragrance, and makeup; and graced the covers of numerous high profile gossip, lifestyle, and fashion magazines.  These endeavors have made them multimillionaires, and “Kardashian” is now a household name.  Due to this, it can be easily argued that when most people hear the name “Kardashian,” they immediately associate it not only with the family name, but also with the brands that are owned by the family.  Blac Chyna using the Kardashian name on certain products and services could confuse the public into believing that Kim, Khloe, or Kourtney, instead of Blac Chyna, sells them. 

However, Blac Chyna is a celebrity in her own right.  She may not be as popular as the Kardashians, but she has made a name for herself in the world of entertainment, fashion, and beauty through her eyelash line, fashion spreads, celebrity relationships, social media following, romantic relationship with the Kardashians’ younger brother, Robert, and a reality show with said brother.  Even if consumers are not confused as to whether a product is endorsed by Blac Chyna or a biological Kardashian, the Kardashians’ lawyer asserts that Chyna’s use of the name will dilute the unique nature of the Kardashian brand.

This claim of dilution is a bit more of a battle, depending on one’s opinion of the difference between the Kardashian brand and the persona and brand that Blac Chyna has created for herself.  Arguably, both the Kardashians and Blac Chyna have risen to fame in similar manners—sex appeal, gossip websites and magazines, dating famous men, and their physical appearance.  At one point, Kim Kardashian and Blac Chyna were good friends, with fans of either woman attributing the latter’s drastic rise in popularity to being taught by Kim how to “work” the media machine.  Can a student of the "Kardashian School" really tarnish the very brand that taught them?  Additionally, Chyna will soon be a sister-in-law of the Kardashians, and presumably come under the management of, or at least influence of, Kris Jenner, the family’s mother and manager (and, most recently, as a result of her own recent trademark registration, “momager”).  Jenner has played a significant role in helping her daughters reach fame, and could arguably have a similar hand in her daughter-in-law’s public profile.  Surely Jenner will take steps to teach Chyna “the Kardashian way.” 

 It should also be noted that Blac Chyna has filed an “intent to use” application, which means that she is not currently using the name, but intends to within the next six months (this type of application also allows for extensions for up to three years), such as when she marries Rob Kardashian and officially changes her name to Angela Renee Kardashian.

Like most types of court actions, this matter may likely be settled out of court, especially since the four women have children that are cousins and are soon to be a family. We will be monitoring how this plays out. Blac Chyna has until January 10th to respond to the Kardashians’ opposition filing.