On May 3, 2016, entertainer Blac Chyna, whose real name is Angela Renee White, filed a trademark application for the name Angela Renee Kardashian. Since Chyna is engaged to Robert Kardashian, Jr. of the famous Kardashian clan, the name will be her legal name in the future.
In December 2016, through their companies, the Kardashian sisters (Kim, Khloe and Kourtney) filed a notice opposing Chyna’s trademark. The Kardashians gave four grounds for opposition (all based on federal trademark law), including the likelihood of confusion. They asked that the Trademark Board deny Chyna’s trademark application and registration.
As a trademark lawyer, I could write pages about this case. But you’d probably get bored. So, what I’ll do instead is answer questions about the opposition that people may be asking themselves.
Why did the Kardashians wait so long to oppose Chyna’s trademark?
Trademarks can only be opposed after they are published by the USPTO (the federal agency responsible for registering trademarks) in a journal called the Trademark Official Gazette. Upon the submission of a trademark application, it takes at least 3 months for the USPTO to review it. Only after an application meets certain legal requirements can it be published in the Gazette. Those who desire to oppose an application can do so within 30 days after publication.
Chyna’s trademark application was initially reviewed in August 2016 (3 months after it was filed), but more paperwork had to be submitted in order for it to meet the legal requirements. As a result, the Angela Renee Kardashian was only published for opposition in the Gazette on November 1, 2016. The Kardashians filed their opposition on December 1st, the last day they could do so.
Why did the Kardashians oppose on the grounds of likelihood of confusion? I know that Angela Renee Kardashian and Kim Kardashian are two different people.
There is a legal test for likelihood for confusion that I can discuss some other time. In essence, companies don’t want their customers to be confused as to the source of the goods and services they provide. For example, Apple would hate if their loyal customer base questioned whether Apple created a cell phone created by another company called the Eye-Phone.
Chyna, through her company, filed Angela Renee Kardashian to be used in conjunction with advertising and entertainment services. However, each Kardashian sister already has her name registered for these same services.
Because of the uniqueness of the Kardashian name (it’s not as common as the last name Smith), anything labeled with it would most likely be associated with the Kardashian family. One could argue that consumers could possibly confuse Chyna’s mark with those of the Kardashians. This is also because many people do not know Blac Chyna’s real name. I myself just discovered it while conducting research for this blog post.
I understand that the Kardashians could oppose Chyna’s mark. But, should they have opposed it?
Absolutely. The Kardashian name is a strong mark and the Kardashian sisters spent a lot of time and effort making it become valuable. This is the definition of goodwill, which is also mentioned in the notice of opposition and trademark law. It is in their financial interest to prevent another person from capitalizing upon it.
In fact, trademark law gives them no choice but to oppose Chyna’s trademark. If trademark owners don’t monitor or police their marks, they will lose all of their trademark rights (ex. right to license the mark). One way for owners to police marks is to oppose the registration of marks that could be confusingly similar to their marks, which is what the Kardashians did. Also, if they didn’t oppose it, they would possibly not be able to succeed in a future trademark infringement suit if the USPTO did end up approving Chyna’s application.
In the end, the opposition is not entirely personal. No, the Kardashian sisters cannot prevent Chyna from getting the last name Kardashian when she marries Rob. However, they could and should prevent her from using it in the same trademark classes as them.
For more information about the case, you can review the Kardashians’ notice of opposition here. For more information about trademarks, read these blogs about trademarking viral phrases and trademark licensing or contact us here.
Update: On March 29, 2017, the trademark application for Angela Renee Kardashian was abandoned as a result of Trademark Trial and Appeal Board proceedings.
