Registered trademark agent and litigation lawyer Sepideh Nassabi’s article “Kardashians cashing in catchprases in trademark law” was published by The Lawyer’s Daily, and examines the latest uproar involving Kylie Jenner's attempt at trademarking the phrase "rise and shine".
The article was published on November 19, 2019. To read the article, visit: https://www.thelawyersdaily.ca/articles/16804
Kardashians cashing in catchprases in trademark law
Love them or hate them, there is no denying that the Kardashian-Jenner clan is a pop culture phenomenon.
Take for example Kim Kardashian and Kylie Jenner. They are both media personalities, businesswomen, socialites and have both been included in Time magazine on its list of the most influential people. They have both built an empire and if there is one thing they know how to protect, it is their brand. In fact, the Kardashian-Jenner clan has applied for over 700 trademark applications around the world.
Recently, Kylie Jenner shared a video on YouTube giving her fans a tour of her Kylie Cosmetics office. For those of you pretending like you did not watch that video, and do not binge watch Keeping Up With the Kardashians, allow me to provide a brief summary. The office is exactly what you expect of a typical office: an unlimited supply of beverages including a champagne vending machine, a conference room which features faux-fur upholstered roller chairs, and, of course, an opportunity to be in the presence of Kylie’s daughter, Stormi Webster.
In fact, at the end of the tour, Kylie takes us to her daughter’s room at the office, where she is seen sleeping in her crib. Kylie then turns on the lights and sings “rise and shine.”
Less than a week after Kylie released the video, there were a billion views of content with the “rise and shine” hashtag, which set a record for the fastest video to achieve such a milestone. Kylie wasted no time and launched “rise and shine” merchandise, including two sweatshirts which sold out before any of us regular mortals had an opportunity to buy one.
Kylie did not stop there. She then filed trademark applications for the catchphrase, or katchphrase if you are a Kardashian-Jenner fan, covering belts, bottoms, coats, dresses, footwear, gloves, jackets and cosmetics. If the trademark applications reach the stage of registration, this could restrict anyone else from using that catchphrase in relation to the merchandise listed in Kylie’s trademark applications.
A basis for which a registration of a trademark may be refused is the confusion test. If a trademark is confusingly similar to another trademark that has been applied for, it can be rejected. Kylie might face this with her trademark application because there are a number of other “rise and shine” trademarks. This is probably why Kylie also submitted a trademark application for “riiise and shiiinnee” as a backup in case the shorter version is rejected.
People have had mixed feelings about Kylie making the move to trademark the catchphrase and, more recently, Kylie took to social media to defend herself after rumours circulated that she had sent cease-and-desist letters to companies using the “rise and shine” phrase.
Kim Kardashian also faced a similar situation earlier this year when she unveiled her Kimono line “solutionwear” brand for briefs, shorts, bodysuits and other undergarments.
The kimono is a traditional Japanese garment that is usually worn for important public holidays, festivals and formal occasions. Kim faced appropriation backlash and was accused of being culturally insensitive as some people found it offensive that she was using the word kimono in connection with undergarments. In fact, a new hashtag made its rounds on Twitter — #KimOhNo — and a petition was started which at one time had more than 25,000 signatures.
The criticism against Kim escalated when people found out that she filed trademark applications for her Kimono brand for a variety of products, such as clothing and apparel and not just limited to undergarments. If registered, her applications could restrict anyone else from using the word kimono in relation to clothing. Although she initially defended her Kimono line despite the appropriation backlash, she eventually dropped that brand and relaunched under the SKIMS brand.
There are other celebrities that have caused controversy with their trademark applications, including Tom Brady and Cardi B, but you will have to wait for my next article to read about that. Stay tuned!
Re-printed with permission from The Lawyer's Daily - originally published on November 19, 2019.
If you have any concerns or questions regarding an infringement of your intellectual property rights contact Sepideh Nassabi at firstname.lastname@example.org.