As the trademark battle between Kylie Minogue and Kylie Jenner once again gains momentum, trademark law is back in the spotlight.
Registering a trademark generally protects a brand from being replicated or mimicked by others. Most trademarks will protect against exact replicas as well as anything with a close likeness, but not everything can be registered.
If it is ruled that your trademark lives in the public domain, it’s very unlikely that it will be registered. When Walmart famously tried to trademark the yellow smiley face in 2006 it was promptly dismissed, even as the retailer attempted to sue a man for creating a parody of it.
Sarah Hargrave, Programme and Student Lead at ULaw, comments: “To have a trademark granted your subject must be distinctive and recognisable – think household names like Google, Nike or Tesco. Words that are used to describe a product can be difficult to trademark, as it’s commonly ruled that these words should be freely available for everyone in your sector to use.
“We move into a slight grey area when it comes to things like names, phrases, or commonly used designs. In theory, getting a trademark granted for these should be difficult or even impossible. However, as we’ve seen this year with the Kylie vs. Kylie battle, when your brand is your name, things can get a lot more complex. If you’re unsure then proceed with caution, as trademark infringement can come with a huge fine and even jailtime if you’re found guilty.”
With several almost unbelievable trademarks in place across the world, Sarah has broken down some of the most surprising from recent years.
“Face” and “Book”
Believe it or not, Meta currently owns the trademark for the words “Face” and “Book”. In fact, the tech giant has a whole glossary of terms which it holds the trademark to, meaning you could land yourself in hot water if you’re found to be using any of them.
Meta’s glossary of trademarks includes words such as “Insta”, “Reels” and “Boomerang”. Using any of these in relation to similar products could land you on Zuckerberg’s radar and see you pursued for trademark infringement.
Is it a bird? Is it a plane? No, it’s a cease and desist if you use this word in a commercial setting. In the 1970s two comic book powerhouses, DC Comics and Marvel Characters (an offshoot of Marvel comics) joined forces to jointly own the trademark to the word “superhero”.
The trademark has been enforced several times, too. In 2016 a British author was issued a cease and desist by Marvel and DC lawyers for naming a book aimed at small businesses: “Zero to Superhero”. Despite a counterattack, Marvel and DC’s claims were upheld in court.
Pictures of the Eiffel Tower
When illuminated at night this Paris landmark is a sight to behold. However, watch out if images are for anything beyond private use as you could quickly end up in a legal battle with the Société D'exploitation De La Tour Eiffel (SETE).
While daylight views of the Tower are free to use, anything showing the tower illuminated is protected under “controlled used”. This means any photography or filming will have to be cleared by SETE. The SETE will charge for the rights to use your images, with the amount determined by intended use for the content.
What’s more, “The Eiffel Tower” is a brand that is protected by trademark laws, meaning any products labelled as such must negotiate a licensing agreement.
Brand designers need to be meticulous when it comes to colour, or risk falling foul of trademark infringement against some big names. Reese’s chocolates, Tiffany’s Jewellery and T-Mobile all famously trademark their distinctive colours, but perhaps the most iconic is Mattel’s “Barbie Pink”.
Officially known as Pantone 219C, this colour is fiercely protected by Mattel. Pop band Aqua famously ran into trouble with the toy manufacturer over use of the colour in the artwork for their single “Barbie Girl”, as well as facing backlash for the song’s title and lyrics.
Kim Kardashian’s children
And so back to the Kardashians/Jenners. North, Saint, Chicago and Psalm West all have their incredibly unique names registered as trademarks, which might cover clothing, toys and skincare. However, the United States Patent and Trademark Office (USPTO), which handles trademarks in the US, makes clear that it is very unlikely to register surnames or first names for trademark protection, except for unique cases.
Sarah continues: “While trademarks can’t govern our free speech, it’s important to be aware of what’s out there if you find yourself using any of these for commercial purposes. One misstep could easily see you and your business faced with huge fines, or even a prison sentence if you’re found to purposefully using another brand’s trademark. In short, always do your research or risk paying the price.”