“A person’s name is to that person, the sweetest and most important sound in any language”–Dale Carnegie. However, if there is one thing that is even sweeter than one’s own name, it is the name of one’s child. Especially when that name is instantly famous and is destined to become a foundation for a multi-million–or, perhaps, a multi-billion–dollar business empire. Celebrities know this–and so do unscrupulous opportunists. This story is about DJ Khaled and Kylie Jenner reclaiming the ASAHD and STORMI brands.
Asahd and Stormi are Instantly Famous
Some people become famous, while others are infamous at birth. For example, the Instagram post announcing the birth of Kylie Jenner’s daughter Stormi garnered 11 million likes in a few hours. Likewise, a related YouTube video generated over 40 million views in just three days. As the documents filed with the United States Patent and Trademark Office (USPTO) allege, Kylie Jenner’s daughter Stormi “became instantly famous.” Similarly, when DJ Khaled’s son was still a baby, the USPTO expressed its official position that “Asahd Khaled is well-known.”
Profiteer misappropriates ASAHD and STORMI brands
Shortly after the birth of DJ Khaled’s son Asahd and Kylie Jenner’s daughter Stormi, an opportunistic profiteer–Business Moves Consulting (BMC)–filed trademark applications for ASAHD COUTURE for cosmetics and STORMI COUTURE for clothes.
Sections 2(a) and 2(c) of the Lanham Act prohibit registration of a trademark that invokes a name of a particular living individual, without that individual’s consent. In this case, the trademark examiner did not initially recognize that Asahd was the name of DJ Khaled’s son. As the result, the examiner allowed registration of BMC’s trademark ASAHD COUTURE. With respect to STORMI COUTURE trademark, BMC obtained its trademark registration by filing a signed statement that the word “Stormi” is not a name of a particular living individual. The end result: unbeknownst to DJ Khaled and Kylie Jenner, BMC registered ASAHD and STORMI trademarks.
Early bird gets the worm
Like all intellectual property rights, trademarks are highly time-sensitive. The first person to file the trademark application has a significant advantage over subsequent applicants for similar trademarks. In this case, BMC immediately recognized the value of brands based on DJ Khaled’s and Kylie Jenner’s children’s names and filed its trademark applications shortly after the births of Asahd and Stormi. DJ Khaled and Kylie Jenner did not learn about BMC’s opportunistic acts until after BMC’s trademark registrations for ASAHD COUTURE and STORMI COUTURE were cited against their own trademark applications. Immediately, DJ Khaled and Kylie Jenner went on the offensive.
The rescue operations
To reclaim the ASAHD and STORMI brands, DJ Khaled’s and Kylie Jenner’s attorneys took different approaches. DJ Khaled sued BMC in a district court. As a result of that lawsuit, BMC transferred the ownership of its ASAHD COUTURE trademark to DJ Khaled’s company ATK Entertainment Inc.
The STORMI story is more complex. In this case, BMC actually threw the first punch by opposing Kylie Jenner’s trademark applications, perhaps expecting a buyout offer. In response, Kylie Jenner’s attorneys requested the USPTO to cancel BMC’s STORMI COUTURE trademark registration. Kylie Jenner’s legal team took a page from DJ Khaled’s playbook using his win as precedent. Kylie Jenner’s attorneys accused BMC of serial fraudulent behavior. Specifically, the accusations focus on BMC’s false claims that the STORMI trademark does not invoke a name of a particular living individual. This case is still ongoing, but Kylie Jenner’s victory is likely imminent.
Brands based on celebrity names can have a very powerful commercial appeal. Indeed, as trademark attorneys, we frequently answer the questions pertaining to trademarking one’s name. In this case, DJ Khaled and Kylie Jenner delayed filing trademark applications based on their children’s names. As a consequence, they had to resort to litigation to ensure that the profits from the ASAHD and STORMI brands will stay within their families.