Celebrity misadventures in trade mark land

In recent years, intellectual property rights have played a significant role in the growth of highly competitive global industries, like fashion and music. This is not to say the least in the United States, where both social media influencers and artists in the music industry have sought to register trade marks also to create a bridge with contemporary trends within the pop and culture scenes.

One might wonder whether this trend might pose difficulties for relevant authorities in the assessment of trade mark applications. This may be particularly problematic when it comes to registering common pop phrases as trade marks, or when the chosen trade mark might raise cultural appropriation concerns.

The latter difficulties presented themselves earlier this year when both Cardi B and Kim Kardashian attempted to register their brands with the US Patent and Trade Marks Office (USPTO).

In March 2019, Cardi B filed an application to have her signature catchphrase, “OKURRR?”, registered as a trade mark with the USPTO. The application was designated for clothing in Class 25 (T-shirts, sweatshirts, hooded sweatshirts, pants, shorts, jackets, footwear, headgear, hats and caps, blouses, bodysuits, dresses, jumpsuits, leggings, shirts, sweaters, undergarments) of the Nice Classification.

The USPTO handed down its decision in May 2019. In light of Sections 1051-1053 of the US Trademark Act, registration was refused because the mark is a commonplace term and therefore does not possess the ability to indicate the origin of the applicant’s goods. Neither does the term identify and distinguish the goods from others in the relevant market. That is to say, it cannot perform the fundamental functions of a trade mark.

In particular, the USPTO reasoned that the mark is an expression widely used by a variety of sources and merely conveys an ordinary, familiar, well-recognized concept or sentiment. Terms and expressions that merely convey an informational message cannot be registered as trade marks.

However, determining whether a term or expression functions as a trade mark depends on how that mark is perceived by the relevant public. The more commonly a term or expression is, the less likely it is that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trade mark.

With support of – amongst other things – Urban Dictionary, the USPTO considered that “OKURRR?” is commonly used in the drag community and by celebrities as an alternate way of saying “OK” or “something that is said to affirm when someone is being put in their place”. Because consumers are accustomed to seeing this term or expression commonly used in everyday speech by many different sources, they would not perceive it as a mark identifying the source of applicant’s goods and/or services, but rather as only conveying an informational message.

While an amended application would not necessarily reverse the decision, the USPTO welcomed the applicant to submit further evidence and arguments in support of registration.

Turning to accusations of cultural appropriation, Kim Kardashian also filed a series of trade mark applications to register the terms “Kimono”, “Kimono Body,” “Kimono Intimates” and “Kimono World” for her new shapewear collection. Amongst others, the applications designated goods in Classes 18 (leather and imitations of leather, animal skins, trunks and travelling bags and umbrellas) and 25 (bags, wallets, shapewear, robes and kimonos) of the Nice Classification:

Her attempt to register “Kimono” has not gone unnoticed. A Japanese word that means “a thing to wear”, a kimono commonly refers to traditional Japanese garments that have been around for centuries, thus prompting claims of cultural appropriation on the side of Kardashian. In particular, using the word “Kimono” for a line of products that have nothing to do with (Japanese) kimonos could potentially be problematic since it would remove the word from any cultural or historical context. Her marketing decision would therefore ignore and potentially erase both Japanese tradition and world-wide Japanese experiences.

In a letter addressed to Kim Kardashian, the Mayor of Kyoto asked Kim to re-consider her decision of using “Kimono” as her trade mark [see here]. In turn, this prompted her to announce on Instagram that she would change the name, although the various trade mark applications for “Kimono” appear to not yet been withdrawn.

Whether or not the USPTO would allow the trade mark applications, her attempt to register “Kimono” for the goods indicated above may nonetheless prove difficult.

As reported on The Fashion Law [see here], the USPTO has already pushed back on at least one of Kardashian’s applications. It noted that the trade mark “includes wording that is indefinite, overly broad, and/or includes goods or services in multiple classes”. Furthermore, the word “Kimono” in connection with Kimono Solutionwear and Kimono World is “merely descriptive of a function of the applicant’s goods/services”.

That decision is not particularly surprising, as marks that are generic cannot be registered. The implication being that Kim cannot register “Kimono” for actual kimonos or other types of wearable garments, such as robes. However, the same would potentially not apply to other types of clothes such as bags and wallets.

It is true that bridging trade mark law to contemporary trends within the pop and culture scenes might cause headaches for both relevant authorities and artists, as has proved to be the case in the examples above.

Creating catchwords might not always be beneficial, especially when large parts of the public latch on to that expression, prompting widespread use. What once initially popularized the relevant catchphrase might also be the demise of it.

IPKat-approved “Kat-mono”

Nonetheless, pivotal in that assessment is also the public’s perception. In Cardi B’s case, the USPTO seemed keen not only to draw conclusions based on traditional dictionaries, but also less conventional sources, such as Urban Dictionary.

Whether or not it is a trade mark application for a kimono for kimonos or an apple for apples, generic trade marks can never afford registration. However, as rightfully noted by The Fashion Law [see here], even if allowed registration, her rights in the stylized “kimono” mark would extend to both the word “Kimono” and the specific font used in depicting that mark. In that sense, her ability to claim trade mark infringement would be narrower than if she had not used that particular font. Regardless of what the outcome might be, Kim Kardashian can also choose to drop the trade marks and continue using the mark “Kimono” in a descriptive, non-trade mark capacity. In all this, the latest news seems to be that eventually Kardashian will name her shapewear “Solutionwear” … and the relevant trade mark application pre-dates the Kimono ones: was it all for the sake of publicity? Who knows. In the meantime, let’s see wait and see what more the future brings to us … Maybe Kat-monos will be the next thing!