In case the Kardashian family isn’t in the news enough already, matriarch Kris Jenner made legal and business news this week over a trademark. Kris Jenner wants to trademark #ProudMama — a hashtag she uses to refer to herself on social media, particularly when posting photos to her Instagram profile.
Being a Kardashian, Kris knows how to cash in on her celebrity brand. If Taylor Swift can trademark phrases she uses in her song lyrics, why can’t Kris Jenner trademark a hashtag she uses on Instagram?
Kris Jenner’s #PROUDMAMA Angers Small Business Owner
While it remains to be seen how Kris Jenner will ultimately monetize her #PROUDMAMA trademark, there is one small business owner who is not happy about Kris’ plan to trademark #PROUDMAMA. However, this story is a classic case of a #missedopportunity for Jenny Present, proprietor of an eponymous jewelry business based in St. Louis, MO.
Reports of Present’s “mama” fight with Kris Jenner over the PROUD MAMA trademark — or PROUD MAMA and #PROUDMAMA trademarks to be exact — provide me with a chance to add to the catalog of “educational moments” here on the Kelley Keller blog. Now, let’s take a look at what Kris Jenner’s trademark application can teach business owners.
Jenny Present sells her jewelry online at jennypresent.com. She promotes 5 unique collections, one being the Proud Mama collection. Kris Jenner, the matriarch of the “Kardashian” crew, uses the hashtag #proudmama in her social media activity and now appears to making plans to commercialize it.
According to records at the U.S. Patent and Trademark Office (USPTO), Jenny Present, through her company jp style, LLC DBA Jenny Present Custom Jewelry, began using the trademark PROUD MAMA commercially for “jewelry” in early April 2010. A federal trademark registration for the mark was issued on March 8, 2011.
As Ms. Present clearly understands, federally registering trademarks is an extremely important element of brand building and brand protection. But, it’s just one element. Maintaining your registration and enforcing your rights along the way are also important elements. Ms. Present seems to have a clear grasp on this as well, but it seems she may have allowed an opportunity to enforce her rights to pass right by her, perhaps unwittingly, but it has passed nonetheless.
On March 25, 2015, Kris Jenner, through her company Jenner Communications, Inc., applied to register the trademark #PROUDMAMA with the USPTO for “advertising, marketing, and promotion services.” Since the mark has not yet been used commercially (a requirement for trademark registration), no date of first use is included in the application.
This matters because the first to use is first in rights under U.S. law. Between two competing marks, the first to use the mark in commerce will have senior legal rights to a later user. The key here is that the marks must be “competing,” a term specifically defined as “confusingly similar” under the U.S. trademark law. Two entities with confusingly similar trademarks simply cannot coexist in the marketplace. This is the law’s way of protecting consumers from being confused as to the source of goods or services.
Can Kris Jenner’s #PROUDMAMA Get Along with Jenny Present’s PROUD MAMA?
In what is being reported as the onset of a “mama” fight between Present and Jenner, the question boils down to whether Present’s PROUD MAMA and Jenner’s #PROUDMAMA are too similar to coexist in the marketplace. Ultimately, this is a subjective question, but there are many guideposts along the way.
If the marks are deemed to be “competing,” then Present as the senior user can block Jenner, the junior user, from starting to use #PROUDMAMA as a trademark in the marketplace. If the marks aren’t deemed “competing,” then both Present and Jenner can go on about their business and coexist in their respective corners of the market.
How do we decide?
The standard for determining whether two marks are “competing” is likelihood of confusion. Essentially, if consumers are likely to believe that the goods and services represented by the two marks emanate from a common source, then the marks are confusingly similar. Note — the question isn’t whether there is actual confusion, just a likelihood of confusion.
The USPTO and federal courts use a 13 factor test to determine whether marks are sufficiently different from one another to peacefully coexist, meaning there is no chance consumers are likely to be confused by them. This is commonly referred to as the DuPont test, named for the case that created them:
Not all 13 factors are relevant in every analysis, but there are a few that are always in play. The top two, in my opinion, are the similarity or dissimilarity between the marks in sight, sound, and meaning and the similarity or dissimilarity between the covered goods and/or services.
Bottom line, if two marks look alike, sound alike, and mean or suggest the same thing, and they cover similar products or services, they are confusingly similar. If, however, they look alike, sound alike, and have similar meanings, but don’t cover similar products or services, they are probably not confusingly similar.
In Kris Jenner’s and Jenny Present’s situation, it’s not difficult to look at the marks PROUD MAMA and #PROUDMAMA and conclude that they look alike (a hashtag and space will not distinguish them enough to matter under trademark law), sound alike (in fact, they are phonetically and aurally identical), and mean or suggest the same thing — a mama who is proud. But whether or not jewelry and advertising, marketing and promotion services are sufficiently related to create confusion is less obvious. This is the hinge point for this case.
I imagine the dispute will go something like this: Jenny Present says — “No way Kris Jenner, you can’t use your mark to advertise, market, and promote things, which could very well include jewelry,” — and Jenner says, “Of course I can, what I’m doing and what you’re doing are totally different – you make jewelry, I’m famous for being a reality TV star and want to make more money from it. No harm, no foul!”
Where Do We Go from Here?
When the USPTO reviewed Jenner’s application, the trademark attorney assigned to the application was tasked to conduct a search of the Office’s records to determine whether any previously filed or registered marks are “competing” and therefore should block the application. The examining attorney would have used the 13 factor DuPont test referenced above.
In this case, the examining attorney’s decision was NO, the marks aren’t competing. Having found no other issues with Jenner’s application, the examiner allowed the application to progress through the trademark process (check out the Trademark Timeline infographic to see what that process is).
The next step after examination is third-party publication. After examination, but before registration, all trademark applications are published for third-party review and opposition for a 30–day period in the Official Gazette of the U.S. Patent and Trademark Office. This is the opportunity for anyone, including Jenny Present, who believes they will be harmed by the published mark being registered to disagree with the examining attorney’s decision to approve an application and lodge an opposition against registration of the application.
When this happens, the application process is halted and the trademark applicant (Kris Jenner in this case) and Opposer (Jenny Present in this case) have an opportunity to resolve their differences amicably or through litigation. Essentially, it’s a second bite at the apple for the Opposer.
If, however, the publication period closes without an opposition being lodged, then the application process continues, and assuming all other requirements are met, the trademark will register. If the would-be Opposer misses the chance to challenge the application during the narrow publication period, then opposing the mark becomes a more difficult and costly process.
This is where it seems like Present missed the mark (pun intended!).
Jenner’s application was published for opposition on August 11, 2015. Present had a small window of time — 30 days to be precise — to oppose registration of Jenner’s mark based on her belief that she will be damaged by Jenner’s mark it is registers. But for whatever reason, she didn’t. If she wants to challenge the registration in the future, she will have to do so only after the registration is issued and/or by filing a trademark infringement lawsuit in federal court, both of which are far more complicated and costly processes.
The value of opposing marks before they register, especially those that haven’t been used commercially, is that you get in front of the freight train before it gains momentum. In many ways, you stop it before it leaves the station. Unregistered marks are significantly easier to challenge than registered marks and all efforts should be made to attack them while still in the application stage. For small businesses, failing to stop the train before it leaves the station can be very costly and potentially devastating to their businesses and their brands.
It is critical for small businesses to federally register their trademarks. Federal registration confers many benefits that unregistered marks don’t enjoy.
It is also critical for small businesses to monitor their marks. There are numerous monitoring services available that should be used diligently in order to identify applications for trademarks that you believe will harm you and your business if they’re registered, even though the USPTO didn’t block them. Learn from Jenny Present’s mistake!
Trademark owners are responsible to police their own rights and keep others from penetrating their market space. Your brand is your castle and your moat is your protection from others breaching your castle. Don’t let it dry up for failure to be on the watch!