Weekly IP Buzz for the week ending July 12, 2019

Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending July 12, 2019.

Japan Politely Asks Kim Kardashian to Rebrand: Kimono Trademark

Kim Kardashian is no stranger to controversy or being in the news, but her latest business foray has piqued interest abroad as well as in the intellectual property field.  The latest public criticism has come from Kardashian’s decision to name her new shapewear line “Kimono,” and her recent moves to trademark “KIMONO,” “KIMONO BODY,” and “KIMONO WORLD” in connection with the shapewear line.

Japanese Government at Odds with Potential Kimono Trademark in U.S.

Kardashian’s choice to use “kimono” has incited a considerable amount of public criticism and response.  Those involved in questioning Kardashian’s choice range from individuals on the Internet all the way to national representatives in Japan.  Specifically, the mayor of Kyoto City, Daisaku Kadokawa has penned an open letter to Kardashian, inviting her to visit Japan to experience “the essence of Kimono Culture” in hopes that she will reconsider use of the term in connection with her shapewear line.  While a country cannot typically intervene in a trademark application without holding specific rights in the contested mark or a confusingly similar mark, the mayor of Kyoto City hoped to persuade Kardashian by noting that the kimono had not only been an important part of Japanese cultural history, but also because the Japanese government is actively working to register kimono with UNESCO to be listed on the Intangible Cultural Heritage List.

Wave of Disapproval Develops in Social Media with News of Kardashian Kimono Trademark Brand

Similarly, social media has also been abuzz in protest of Kardashian’s latest move.  Across multiple platforms such as Facebook, Instagram, and Twitter, Japanese women have posted photographs of themselves in actual kimonos in protest against Kardashian’s latest business venture.  Despite all of the public outcry, such sentiment is prohibited from impacting the U.S. Trademark Office’s decision.  The decision over whether Kardashian will be able to successfully register “KIMONO” is left ultimately up to the U.S. Trademark Office alone, and the federal agency is banned from making subjective decisions on the registrability of the mark based on public sentiment.  

Read the full article here.

U.S. Trademark Office Denies Warner Brothers’ Trademark Application

The U.S. Trademark Office recently made headlines when it decided to deny Warner Brothers Entertainment (“Warner Brothers”) the trademark registration for “I solemnly swear that I am up to no good.”  Fans of the J.K. Rowling series Harry Pottermay recognize the phrase as one that Harry uses in the famous book series to access his “Marauder’s Map.”  

Warner Brothers Trademark Slogan Deemed Informational Use Only

Despite Warner Brothers’ argument that fans worldwide would recognize the phrase as being connected to the famous Harry Potter movie series, the U.S. Trademark Office refused to accept the Warner Brothers’ trademark application on the grounds that the Harry Potter phrase did not actually qualify as a trademark.  In fact, phrases in general cannot be registered as trademarks because U.S. trademark law use trademarks as a means of consumer protection.  More specifically, trademarks are marks that should allow consumers to immediately recognize the source from where the goods or services originate.  

In this case, the U.S. Trademark Office stated that the phrase “I solemnly swear that I am up to no good” was, at best, an informational slogan, and at worst, a widely-used phrase that could be connected to a wide variety of different sources, concepts, or even sentiments.

As such, because consumers could be easily confused or not immediately identify the source of goods from the phrase alone, the U.S. Trademark Office denied Warner Brothers’ application to register the mark in a variety of trademark categories that cover various merchandising options.

Read the full article here.

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Darin M. Klemchuk is founder of Klemchuk LLP, a litigation, intellectual property, and transactional law firm located in Dallas, Texas. He also co-founded Project K, a charitable movement devoted to changing the world one random act of kindness at a time, and publishes Thriving Attorney, a blog dedicated to exploring the business of the practice of law, productivity and performance for attorneys, and other topics such as law firm leadership and management, law firm culture, and business development for attorneys.

Click to learn more about Darin M. Klemchuk's law practice as an intellectual property lawyer.