News of a trademark win for Australian singer Kylie Minogue over like-named reality television star Kylie Jenner rocked the web last week. The only problem is that the facts are not quite as they seem.
In an unrelated trademark matter, Adidas asserted its might against an unexpected recipient: Tesla, which filed to register what Adidas claims is a lookalike trademark. And with the recent announcements of the chief executive officer shifts at Burberry, Céline, Tiffany & Co., Ralph Lauren and Barneys New York, the role of non-compete agreements comes into the spotlight.
Kylie vs. Kylie: An Exercise in Fake News
Kylie Minogue and Kylie Jenner made headlines last week in connection with a recent trademark battle. A slew of publications reported that Jenner’s trademark was rejected by the U.S. Patent and Trademark Office after the Australian singer opposed her pending registration. While these two were, in fact, embroiled in a bitter trademark opposition battle beginning last year — with Minogue moving to block Jenner from federally registering a few marks, including at least one for “Kylie Cosmetics” and others for “Kylie” — the women actually settled that case last month.
As such, the most recent development in connection with Jenner’s trademark portfolio is completely distinct from Minogue’s strongly worded opposition and the trademarks at issue in the previous matter. Instead, the USPTO has refused to register Jenner’s “Kylie Jenner” mark, stating that it is too similar to another, already-registered mark for “Kylee” — owned by California-based company, Mimo Clothing Corp. — in the class of goods that covers clothing and accessories.
Jenner’s counsel has appealed the USPTO’s decision to deny her trademark registration. It will now proceed to the Trademark Trial and Appeal Board, a body within the USPTO that handles oppositions and appeals.
Adidas Takes on Tesla
In other trademark news, Adidas is giving legally aggressive luxury brands a run for their money. The German activewear giant — which has initiated trademark matters against Italian fashion brand Bally, fellow footwear brands Ecco and Skechers, Marc Jacobs, Forever 21 and others in the recent past — decided to take on Elon Musk’s Tesla in connection with the company’s use of and attempt to federally register its own three-pronged logo.
According to Adidas’ opposition, which was filed with the Trademark Trial and Appeal Board late last week, Tesla’s new logo — three horizontal stripes that are similarly styled to the “E” in Tesla’s primary logo — is a bit too similar to the activewear giant’s famous three-stripe logo, which is protected by a number of federally registered trademarks. Tesla has since withdrawn its trademark applications for its three-lined logo, making this something of a speedy win for Adidas.
Given the relative lack of protection afforded to fashion brands by way of copyright law (which fails to provide rights in garments and accessories in their entirety) and patent law (largely because design patents entail a process that is both too lengthy and costly for most brands), trademark — and trade dress — law is a highly utilized type of protection for fashion industry entities, which makes sense considering that no matter the product, consumers are largely buying based on the label and the goodwill/esteem associated with it. With this in mind, trademarks are some of brands’ most highly valuable assets.
Chief Executive Officers and the Law: Influx at Burberry, Céline, Tiffany & Co., Ralph Lauren, Barneys
In addition to the seemingly unending game of musical chairs played by the fashion industry’s top creative talents, including — most recently — Clare Waight Keller leaving Chloé and Riccardo Tisci stepping down from his role at Givenchy, the industry’s chief executive officers are making moves as well. Logistical/business model changes and the transformations in aesthetic that come with the rotation of fashion ceos and creatives, respectively, are often accompanied by an overarching focus on competition, or the prevention of it.
As highlighted by a number of recent proceedings — including Hedi Slimane’s case against Yves Saint Laurent’s parent company Kering, th eventually settled battle between Carolina Herrera and Oscar de la Renta over designer Laura Kim, and the now-settled (but still very noteworthy) litigation between Nike and Adidas, which centered on three ex-Nike employees who jumped ship to join Adidas, allegedly stealing millions of dollars’ worth of confidential information — how brands will handle the departure of their top talents is critical. As it seems that to date, no shortage of brands has relied heavily on non-compete agreements, more will likely opt to utilize them.
These contractual clauses — which are commonly entered into between two parties (the company and often individuals earning higher levels of skill/salary) either upon contract signing or at the end of a business relationship, in which one party agrees not to compete with the other for a set period of time — and courts’ treatment of them stand to be increasingly relevant as a legal trend, particularly if the length of directors’ tenures continues to be shortened.
The use of noncompete provisions has been on the rise over the past decade, even among less highly paid and skilled employees, and given the faster cycle of fashion and Millennials’ penchant for job-hopping, this is an ever-evolving area of law.
Courts around the country and on an international basis are split in terms of how to implement parties’ noncompete agreements, which aim — at least in part — to ensure that employees do not take companies’ confidential information, such as not-yet-revealed designs, marketing strategies, customer and supplier lists, and the like, with them to competing companies. California, for instance, generally deems noncompete agreements to be invalid contractual provisions due to the fact that they potentially stifle competition and prevent individuals from finding any work in the field in which they are most skilled for the time period that the clause applies. Most other states, however, observe the largely ambiguous rule that a “reasonable” noncompete is valid and enforceable.
Because most cases are generally settled out of court — this includes those involving noncompete provisions — it is difficult to determine exactly when one (and its specific terms) is appropriate. Given that an increasing number of fashion industry-related labor disputes are finding their way into court, we may soon get some answers.
Julie Zerbo is founder of The Fashion Law.