Any phrase, logo, design, or a combination of these elements, that describes and establishes a good or service is considered a trademark. Two very well-known stars of Hollywood, Hailey Bieber and Kim Kardashian, have recently found themselves involved in trademark infringement lawsuits. On June 15, 2022, Mrs. Hailey Bieber produced and launched a line of skincare products entitled Rhode.[i] Ms. Kim Kardashian also launched a skincare line in early June.[ii] Both lawsuits claim the Hollywood stars’ brands are confusing to customers and retail partners due to the names being similar to existing companies.
What is a trademark?
A trademark is a form of intellectual property that “can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services.”[iii] A trademark is used to refer to a product that identifies as goods, while a “service mark” is used for services.[iv] A trademark is utilized to assist customers in recognizing and identifying a product in the marketplace as well as aid customers in differentiating a product from its competitors. A trademark also can “provide legal protection for” a brand and help guard the brand “against counterfeiting and fraud”.[v] A trademark awards the owner with the rights to use a word or phrase in reference to specific goods and services, but not the right to the particular word or phrase in general. A trademark is highly successful in providing its various protections when it is creative and unique in reference to the good or service it describes.
How do you establish a trademark?
An individual becomes the owner of a trademark immediately upon use of the trademark with the promotion or sale of the goods or services. The right to one’s trademark is established upon the use of it. However, the rights to use a trademark are somewhat limited if the trademark is not registered with the United States Patent and Trademark Office. If a trademark is not registered with the U.S. Office, the rights of use are limited to the geographic area where an individual is providing their goods and services. If an individual desires stronger trademark rights with a wider range of use, such as nationwide, then the individual must register its trademark with the United States Patent and Trademark Office. A registered trademark provides an individual with broader rights and sufficient legal protection from infringement.
How is a trademark protected?
Once a trademark has been registered with the United States Patent and Trademark Office, and it has been granted by that office, the phrase, design, word or a combination that classifies the good or service becomes legally protected. This legal protection prevents others from registering the same trademark without the owner’s permission and helps prevent an individual from utilizing a trademark that may be very similar and related to the same goods and services as the owner’s trademark. The trademark that has been registered is listed in a public database, which provides notice to the public for any individual searching for a similar trademark.
Without the act of registering the trademark, an individual does not have the right to bring a lawsuit concerning the trademark. The registration of a trademark also provides the owner with a legal presumption that the owner does in fact own the trademark and has the right to use it. This is crucial to the success of a lawsuit brought for trademark infringement and will limit the amount of evidence necessary to present a good case. Several popular brands throughout the United States choose to register their trademarks in order to protect their brand names as a whole.
How long is a registered trademark protected?
As long as an individual continues to use a registered trademark in the marketplace, the registration of the trademark can last indefinitely. Additionally, the owner of the registered trademark is required to file certain documents to demonstrate this continued use with the United States Patent and Trademark Office. If an individual fails to properly maintain a trademark registration, that individual can be subject to loosing the registration entirely and be forced to begin the registration process again.
What happened to Bieber and Kardashian?
On June 21, 2022, co-founders of a fashion company entitled “Rhode” filed suit against Mrs. Bieber in the United States District Court for the Southern District of New York for trademark infringement. The suit claims that the fame and large following of Mrs. Bieber “risks eclipsing the brand that the partners founded in 2014.”[vi] The suit also highlights that Mrs. Bieber’s use of marketing hashtags on social media are very similar to those used by the fashion company, which may cause confusion among retail partners and customers.
Similarly, Ms. Kardashian was sued on June 28, 2022, by Cydnie Lunsford for trademark infringement over Ms. Kardashian’s skincare line entitled “SKKN”. Ms. Lunsford has engaged in business since 2018 with her skincare brand entitled “SKKN+”. Coincidentally, Ms. Lunsford’s company “Beauty Concepts” filed an application to register a trademark for “SKKN+” just two days before Ms. Kardashian filed several trademark applications to use the term “SKKN By Kim”. Both parties claim that they tried to work together to avoid bringing legal action against one another.
Why are these lawsuits significant?
These specific lawsuits are not the first time the creators of a skincare brand have been sued for trademark infringement. Litigation regarding trademark infringement does frequently occur concerning various types of products and services and can sometimes become a lucrative situation for the original trademark holder.
If you are looking for assistance with a trademark infringement case, the registration of a trademark, or another legal matter regarding intellectual property, and reside in the State of Tennessee, call Cole Law 615-490-6020 to schedule a consultation with one of our Brentwood, Tennessee Intellectual Property Attorneys.
[i] “Hailey Bieber Sued for Trademark Infringement Over Skincare Line”, Wall Street Journal (June 21, 2022), available at https://www.wsj.com/articles/hailey-bieber-rhode-lawsuit-11655838774.
[ii] “Kim Kardashian Is Being Sued Over SKKN”, The Cut (June 29, 2022), available at https://www.thecut.com/2022/06/kim-kardashian-skkn-lawsuit.html.
[iii] “What is a trademark?”, United States Patent and Trademark Office, available at https://www.uspto.gov/trademarks/basics/what-trademark.
[v] Supra note iii.
[vi] Supra note i.