Better put an ® on it: celebrity trade mark tales

Taylor Swift and her football star boyfriend Travis Kelce are arguably the world’s hottest couple right now, so it is no surprise that Travis recently applied to register his name and several of his oft-used phrases as a trade mark. Such is their star power that a post on the WebTMS X account mentioning the application and tagging Travis outperformed every other post in 2023. It’s a reputation worth protecting, and it got us thinking about celebrity trade mark strategies.

There are two main (and related) reasons for well-known personalities to seek a trade mark registration. Firstly, to monetise their brand. In Travis’ case this is sound business sense. He won’t play football forever, but if he can branch out into adjacent areas, he can build significant revenue streams from associated products and services – including the football podcast he presents with brother Jason. Now is the time to start working on that. His profile is high and, let’s face it, his relationship with Taylor might not last forever. If she starts turning her lyrics on him, he needs a solid exit strategy.

The second reason to protect the Travis Kelce brand is to prevent others from profiting from it and to stop his name from being associated with poor-quality merchandise or undesirable campaigns. This is important, but celebrities are sometimes criticised for registering their name when commentators assume it’s all about money. Greta Thunberg was subjected to backlash for registering her name, but she was understandably concerned about it being used in relation to causes she does not support. This is especially important in the often-controversial world of climate action.

Fame doesn’t guarantee fortune where trade marks are concerned.

Celebrity is not a guarantee of success in the trade mark courts, however, as F1 driver Lewis Hamilton discovered in his quest to design and market the ultimate watch. Watches and F1 complement each other, both being concerned with precision engineering, sleek design, and luxury appeal. It’s not a huge leap for Lewis to branch out into watch design, and he has collaborated with Swiss luxury watchmakers IWC to create an exclusive watch that will set you back a cool £27,000. It’s called the IWC Portugesier Tourbillon Retrograde Chronograph Lewis Hamilton, which is a bit of a mouthful. Part of the reason for the full name may be that Hamilton lost a three-year registry battle with established watchmakers Hamilton International. His IP holding company, 44IP Limited, had applied to cancel Hamilton International’s earlier EU registration for watches and jewellery related goods and services when an application they filed for the word mark HAMILTON was opposed by the watchmakers. 44IP Limited claimed that Hamilton International’s earlier registration had been made in bad faith, but the watchmakers produced evidence that their brand had been in operation since 1892, counting Elvis as a customer, and the EU IPO’s Board of Appeal ultimately ruled in their favour.

“I’m Kylie!”

The court in the Hamilton case noted that: “There is no ‘natural right’ for a person to have his or her own name registered as a trade mark, when that would infringe third parties’ rights.” This factor also comes into consideration when two celebrities with the same name conflict over trade marks, and things can get personal.

Depending on your age, the name “Kylie” either conjures up a diminutive popstrel who started her career in dungarees on Aussie soap opera “Neighbours” and became a global music icon, or a reality star who has converted her fame into a successful beauty business.

In 2017, these two famous Kylies came into opposition as Kylie Minogue opposed Kylie Jenner’s application to register their shared moniker. At the time, Kylie Minogue’s lawyers scathingly described Jenner as a: “secondary reality television personality” describing Minogue as an “internationally renowned performing artist, humanitarian and breast cancer activist known worldwide simply as ‘Kylie’”. In later interviews Minogue remarked that the opposition was simply sound business sense, having worked hard to build and protect her brand for many decades. Jenner was refused permission to register Kylie for cosmetics purposes, but Minogue hints that the pair came to an agreement. Jenner sold a majority stake in her business to Coty in 2020 for $600million.

Neymar tackles bad-faith registrations

Brazilian footballer Neymar is famed for his “trade mark” goal celebration and has been sanctioned by referees for his tongue-out, hand-waggling antics. He was less than delighted, however, to find that when he applied to register his name as a trade mark someone had beaten him to it and was using his name on apparel. Portuguese businessman Carlos Moreira claimed that he had no knowledge of the one-time world’s most expensive footballer, and simply liked the sound of the word when he successfully registered it as a mark with the EU IPO in 2012. However, upon Neymar’s legal team applying for a cancellation in 2016 on the grounds that he registered the name in bad faith, the EU IPO agreed, and the mark was duly cancelled. A bit of WebTMS lab work reveals that Neymar has at least 65 live marks right now. However, there are several other owners with “Neymar” marks, so he may still have work to do to tackle the issue of others trying to benefit from his fame.

“Taylor’s version®” of trade mark strategy: if you like it put an ® on it

Going back to Taylor and Travis, there’s no doubt that he is learning from an expert that the world of “[IP] is a ruthless game unless you play it good and right” (©Taylor Swift). His seven recently applied-for marks pale in comparison to the more than 700 applications filed worldwide, the majority made by Taylor’s company TAS Rights Management. They cover everything from her name to well-known lyrics such as “Shake it off®” and “Cause we never go out of style®”, and even the names of her beloved cats Meredith Grey, Olivia Benson and Benjamin Button. She also has a registration for “Taylor’s version” – her label for the albums she re-recorded after her former record company sold her back catalogue to Scooter Braun.

Taylor is an artist who knows her intellectual property rights and is prepared to defend them. We can only hope with all those registrations to manage, that she has an outstanding trade mark portfolio management system with which to do it!