Will the Real Kardashian Please Stand Up

By Donna L. Mirman

The Kardashian name is one of the most recognized household names. Fueled by the brand savvy iconic sisters Kim, Khloe and Kourtney, the Kardashian name has become a mega brand for marketing everything from reality television shows, advertising services to virtually every fashion related product. KARDASHIAN BEAUTY, KARDASHIAN KOLLECTION, KARDASHIAN KHAOS to name just a few, are some of the many trademarks used to market the Kardashian sisters’ goods and services. Now make some room sisters because there is a future Kardashian sister on the scene:

Angela Renee White aka Blac Chyna is seeking to jump on the Kardashian trademark bandwagon. Just a few short weeks after Blac Chyna and Rob Kardashian announced their engagement in April, 2016, Blac Chyna filed an application to federally register the name ANGELA RENEE KARDASHIAN with the U.S. Patent and Trademark Office on May 3, 2016 under Application No. 87023613. This application covers advertising services and entertainment services, namely, personal appearances by a social media celebrity, model, actress and performer. Encountering absolutely no substantive refusal to registration, Ms. Chyna’s application was published in the Trademark Office Official Gazette on November 1, 2016.

It is readily apparent that the mere engagement to Rob Kardashian does not bestow upon Ms. Chyna a legal right to use and register the KARDASHIAN name. Nevertheless, Ms. Chyna was very shrewd in responding to the Trademark Examiner’s inquiry as to whether Angela Renee Kardashian identifies a living individual. While never actually confirming that she is an heir to the Kardashian name, she nevertheless states that Angela Renee identifies Angela Renee White and that Angela Renee White consents to the use and registration of the name Angela Renee Kardashian in the pending application. In receiving this consent, the Examiner did not further question Ms. Chyna as to the registration of the Kardashian name and the application proceeded to publication.

Now Kim, Khloe and Kourtney are not exactly beating the drum for their future sister-in-law’s use and registration of their name. During the 30-day Opposition period following publication, Kim, Khloe and Kourtney jointly filed a Notice of Opposition to the publication of Ms. Chyna’s application with the Trademark Trial and Appeal Board on behalf of their companies collectively, Khlomoney Inc., 2Die4Kourt and Kimsaprincess Inc. Specifically, the grounds of Opposition are that Ms. Chyna’s application will cause a likelihood of confusion with the real Kardashian sisters’ use of KARDASHIAN as well as dilute the distinctiveness of the fame of the KARDASHIAN name.

Why did the Trademark Office approve the application for ANGELA RENEE KARDASHIAN in the first place considering that the application was not filed by the Kim, Khloe and Kourtney’s companies jointly or on behalf of their companies individually or in any of their personal names? Well, let’s just say that in the Trademark Office, it is getting harder and harder to keep up with the Kardashians. In looking at the Trademark Office database, there are in excess of 100 applications and registrations for the name KARDASHIAN and KARDASHIAN-formative marks covering a wide variety of goods and services, all of which are owned by various entities. There is a definite lack of common ownership of the KARDASHIAN registrations and pending applications which is very problematic and a common trademark pitfall. While many of these registrations are owned collectively by Khomoney Inc., 2Die4Kourt and Kimsaprincess, the Plaintiffs in the Opposition, there are registrations for each of the sister’s names registered solely to their individual companies as well as to entities not at all related to the Kardashian sisters. For example, the registration for KIM KARDASHIAN is owned by Kimsaprincess, Inc. The registrations for KEEPING UP WITH THE KARDASHIANS and KOURTNEY & KIM TAKE MIAMI, are owned by E! Entertainment Television, LLC. This lack of common ownership for the many registrations and pending applications has served to dilute the KARDASHIAN trademark and make way for registration by third parties such as Blac Chyna.

This trademark pitfall could have been avoided if the Kardashian sisters had maintained ownership of the KARDASHIAN and KARDASHIAN-formative marks consistently in the name of either a holding company or in their three companies jointly. If the Kardashians had followed the simple trademark rule of consistent ownership of the numerous KARDASHIAN trademarks, the Trademark Examiner would have most likely kept up with the Kardashians whereby refusing the future sister-in-law’s application. By the way, Ms. Chyna’s Answer to the Notice of Opposition is due on January 10, 2017.

By keeping trademark ownership consistent, you maintain the strength and integrity of a brand and avoid potential dilution by newcomers. When you are not sure in whose name to file, it is strongly encouraged to seek advice of IP counsel in establishing issues of ownership and avoiding a common pitfall.