Trademark Lawsuits Take the Shine out of Celeb Skincare Launches
Two recent cosmetic and skincare brand launches by high-profile celebrities have resulted in likewise high-profile trademark lawsuits.
On June 15, Hailey Bieber launched her RHODE line of skincare products to social media fanfare, including promotion by her husband, Justin Bieber. Less than a week later, on June 21, Rhode-NYC, LLC – owner of the RHODE fashion line – sued Bieber for trademark infringement.
The same day the RHODE suit was filed, Kim Kardashian launched her own skincare line, SKKN BY KIM. Kardashian soon found herself the defendant of a trademark infringement lawsuit brought by Beauty Concepts LLC, the owner of the trademark SKKN+.
Applying foundation: the trademark applications
Prior to their highly-publicized launches, Bieber and Kardashian knew of the earlier-claimed trademarks because both of their trademark applications were filed and examined. In Bieber’s case, the USPTO cited a registration for RHODE, which identified clothing items against Bieber’s RHODE application, which identified a variety of beauty and wellness products. However, Bieber was able to overcome the refusal with arguments. Rhode-NYC did not oppose the Bieber’s RHODE trademark application at the Trademark Trial and Appeal Board (“TTAB”) when it had the opportunity to do so and instead went straight to federal court. The TTAB can only determine a party’s right to own a federal trademark registration, while a federal court can also enjoin the use of a trademark.
In Kardashian’s case, Kardashian filed nearly 20 separate applications for SKNN BY KIM for a variety of clothing, hair accessories, household appliances, beauty products, vitamins, jewelry, linens, and other various products. Kim also filed applications for beauty salon services and appliances to perform skin treatments, but later abandoned those applications. Beauty Concepts has one application for SKNN+ for beauty salon services and two recently filed applications for retail store services and beauty salon services all alleging use as early as 2018. The parties are now engaged in both oppositions before the TTAB and litigation in federal court. Beauty Concepts opposed several of Kardashian applications, but Kardashian has filed a motion to suspend the TTAB matters pending the litigation.
Looking in a vanity mirror: the concept of reverse confusion
Both of these cases involve “reverse confusion,” the concept that the newer trademark’s recognition will overwhelm the earlier mark and consumers will believe the senior user is associated with the earlier trademark. For example, the RHODE complaint alleges, “Consumers will be confused by Defendants’ use of ‘rhode’ such that that they may believe that Rhode, a long-established clothing brand, is merely an offshoot of Ms. Bieber’s intended celebrity-product empire.”
Similarly, the complaint against Kardashian states, “Beauty Concepts’ presence on the internet has been overwhelmed by Defendants’ advertising, and Beauty Concepts has experience[d] actual confusion in the form of individuals contacting Beauty Concepts to ask if they are affiliated with the Defendants and their [i]nfringing SKKN Marks.”
Contouring: the cases so far
Rhode-NYC recently lost its motion for a preliminary injunction to stop Bieber from releasing a promotional video using the RHODE mark to promote her beauty products. The judge noted during the hearing on the Motion that Bieber does not intend to use the mark RHODE for clothing and that RHODE is a relatively common surname, as well as being Bieber’s middle name. But, defeating a preliminary injunction does not necessarily mean that Bieber will ultimately succeed in the end.
Kardashian has not yet formally responded to the SKKN lawsuit, but we are keeping a (moisturized and made-up) eye on these cases. We find it interesting when a celebrity has “skkn” in the game on the “rhode” to the courtroom.