This week, Kim Kardashian caused controversy (again) by launching a line of 'shape wear' targeted towards curvy women. Nothing wrong with that, right? Of course not. But, the controversy was in the name and her attempt to trademark it. The name is "Kimono" and she attempted to trademark that word as well as the word in combination with others. While Kardashian is no stranger to controversy and accusations of cultural appropriation, ignoring all of that baggage, there are some significant trademark problems here. Let's explore the issues of disclaiming and misleading.
Kardashian, through an Ohio law firm, filed several applications last week for the shape wear line using various derivations of Kimono + *word* combination. For example, she attempted to trademark "Kimono", "Kimono Intimates", "Kimono Body" and a few others. A brief glance at the applications showed that Kardashian may not fare well with the USPTO. Further, an application quietly filed in March confirmed that. The USPTO takes about 3 months to assign applications to "examiners" - individuals who do their own searches to see if the mark can't be allowed. There are various reasons a mark might be rejected - too generic (i.e. trying to trademark the color "brown") or maybe too misleading (i.e. trademarking "Hamburgers" for a clothing shop). The March application is interesting because it was assigned to someone and has a response.
It wasn't allowed.
The examiner found there were several problems, the most important of which were that the word "kimono" was not disclaimed and that the use of the word kimono for clothing that is not a kimono is misleading.
Disclaiming terms is an important part of trademark applications and one of the reasons to hire an experienced attorney to do your search and filing for you. Disclaiming a term means that, because the word is so commonly used in the English language, it would be totally unfair to allow one person to be the only one with the right to use that word on products. Think if Nike trademarked the term "Nike shoes" and it was allowed without disclaiming the word shoes. Boom! Now, nobody else can use the word "shoes" to describe their shoe products. For obvious reasons, the USPTO requires certain terms be disclaimed when it's clear they're describing a product and will need to be used by other people to describe their products. Kimono, according to the USPTO is one of those terms.
The misleading portion was described by the USPTO as potentially "deceptively misdescriptive", meaning that it's not cool to use the word kimono, which is a very specific type of clothing item, to describe clothing...when that clothing is not actually kimonos. Especially when that clothing is nowhere near being like a kimono - a loose fitting item meant to present a straight silhouette and not a skin tight item of clothing meant to hug the body. As of writing this post, no response has been filed and none is due until the end of November. But there are two takeaways from this debacle.
Please do not give yourself a mountain of bad press by trying to lay claim to a word used to describe traditional, cultural things.
Please hire a solid, experienced attorney to handle your trademark search and application to avoid a headache when all you want to do is launch your product.
