Y.Z.Y., Inc., a fragrance company, based in Miami, Florida, filed a trademark application with the United States Patent and Trademark Office (“USPTO”) in June 2018. The USPTO determined that the company’s trademark was too similar to Kanye West’s YZY mark, despite the companies being in the business of making and selling different products. Kanye West makes and sells footwear and clothing, while the fragrance company sells various beauty products. The USPTO found that the trademarks are so similar that it would confuse consumers because, “the literal elements of the mark are identical in appearance, sound, and meaning.” The fragrance company ended up taking the dispute to USPTO’s Trademark Trial and Appeal Board (“TTAB”) where it requested the cancellation of Kanye West’s YZY mark.
In the United States, trademark rights are vested in the party who is first to use the mark on specific goods, as well as services in commerce, and not in the first party who merely files an application for it. Kanye West first began using the mark in 2015, when his YEEZY 750 Boost sneakers were sold to consumers. The fragrance company claimed that it started using the mark as early as 2011. The company claimed that it has priority over West due to its prior use. Kanye West’s legal team, on the other hand, denied majority of the fragrance company’s assertions. However, a month later, Kanye West’s legal team alerted the TTAB that the parties were engaged in settlement negotiations.
To date, there has not been a formal settlement between the companies. It will be interesting to see how this dispute is resolved considering Kanye West recently filed a YZY trademark for makeup, skin, and hair products.