Social media has revolutionized the best way we work together with each other. In a digitally pushed society, social media has dominated the advertising panorama because of the rise of movie star influencers. Two of probably the most outstanding movie star influencers right now are Kim Kardashian (“Kardashian”) and Hailey Rhode Bieber (“Bieber”). The time period “influencer” is broadly outlined by many as “people who’ve the ability to have an effect on buy choices of others due to their (actual or perceived) authority, information, place, or relationship.”1Lauryn Harris, Annotation, Too Little, Too Late: FTC Tips on “Misleading and Deceptive” Endorsements by Social Media Influencers, 62 How. L. J. 947 (Initially revealed in 2019). Influencers leverage their reputation on social media websites to endorse, promote, and promote third-party merchandise.2Id. In June 2022, Kardashian and Bieber launched their respective, and closely anticipated skin-care manufacturers. Kardashian launched SKKN BY KIM whereas Bieber launched Rhode.3Mykenna Maniece, Why Hailey Bieber and Kim Kardashian are Being Sued over their Magnificence Manufacturers, Betches, July 6, 2022, https://betches.com/why-hailey-bieber-and-kim-kardashian-are-being-sued-over-their-beauty-brands/. For the reason that launch of their respective corporations, each SKKN BY KIM and Rhode have confronted lawsuits associated to alleged trademark infringement.4Heather Antoine, Hailey Bieber’s New Skincare Line Welcomed with Infringement Lawsuit, Forbes, June 30, 2022, https://www.forbes.com/websites/legalentertainment/.Danielle Cohen, Kim Kardashian is Being Sued Over SKKN, The Reduce, June 29, 2022, https://www.thecut.com/2022/06/kim-kardashian-skkn-lawsuit.
On June 15, 2022, Bieber launched Rhode, her first foray within the magnificence business, in addition to her first ever model.5Supra, observe 4. After a number of years of improvement, Rhode launched its first three merchandise and bought out inside a number of hours.6Margaret Blatz, Hailey Bieber’s Rhode Pores and skin is Getting a Entire Restock, Elite Dailey, Aug. 10, 2022, https://www.elitedaily.com/fashion/hailey-bieber-rhode-skin-2022-restock-details. Nevertheless, lower than every week after the launch, Purna Khatau (“Khatau”) and Phoebe Vickers (“Vickers”), principals of Rhode-NYC, filed a lawsuit towards Bieber’s Rhode model alleging trademark infringement.7Supra, observe 4.
In 2017, Rhode-NYC, LLC obtained its first trademark registration for a clothes line known as Rhode.8Id. When submitting a trademark, the U.S. Patent and Trademark Workplace (USPTO) categorize merchandise (or items) and companies into particular courses.9Get Able to Search – Classification and Design Search Codes, U.S. PAT. & TRADEMARK OFFICE (Sept. 21, 2022), https://www.uspto.gov/logos/search/get-ready-search-classification-and-design. Over the subsequent a number of years, Rhode-NYC filed trademark purposes for ICs together with purses and footwear (nonetheless pending), and for kids’s clothes, males’s clothes, sun shades, jewellery, blankets, textiles, and hair equipment, and many others.10Supra, observe 4. So far, Rhode-NYC has not filed any trademark purposes in IC 3, which covers Cosmetics and Cleansing Merchandise.11Supra, observe 7.
In February 2020, Bieber filed an “intent-to-use software meant to carry her place in line for the eventual use of ‘RHODE’ in IC 3 for magnificence merchandise.”12Id. When USPTO’s Analyzing Legal professional didn’t discover any probability of confusion between Rhode-NYC and Bieber’s RHODE mark, her mark was revealed for opposition.13Id. Rhode-NYC didn’t oppose the trademark software when Bieber’s RHODE mark was revealed.14Id. As a substitute, Rhode-NYC filed a authorized injunction citing infringement and unfair competitors towards Bieber’s RHODE model.15Id.
Equally, Kardashian, the 41-year-old billionaire, has an in depth resume spearheading a number of collaborations with quite a few manufacturers in addition to founding a number of corporations.16Rachel Askinasi, How Kim Kardashian constructed her $1.8 Billion Empire, Insider, Sep. 7, 2022, https://www.insider.com/photos-kim-kardashian-west-career-evolution-2019-2. Nevertheless, one in all Kardashian’s newest ventures into the wonder world, SKNN BY KIM, has landed her in the course of a lawsuit accusing her of trademark infringement.17Press Launch, COTY, Kim Kardashian Launches SKKN by Kim, a New Line of Excessive-Efficiency Skincare in Partnership with COTY (Could 31, 2022). On June 21, 2022, Kardashian launched SKKN BY KIM by means of its direct-to-consumer web site.18Id. Following SKKN BY KIM’s launch, Magnificence Ideas, a small magnificence enterprise, sued Kardashian, alleging infringement on the “trademarked identify of a Brooklyn-based Black-owned small enterprise known as Magnificence Ideas, which gives salon companies underneath the title ‘SKKN+.’”19Supra, observe 4. Since August 2018, Magnificence Ideas has used the SKKN+ emblem for its Class 3 services and products, and so they allege they solely realized of SKKN BY KIM when Kardashian filed seventeen trademark purposes in July 2021.20Id. Magnificence Ideas declare contains “trademark infringement and unfair competitors, reverse confusion, illegal misleading acts, and enterprise practices in violation of New York Gen. Bus. Regulation § 349-50.”21David H. Siegel, Do you Know SKKN? No, Not that One. The Concern of Reverse Confusion for Small Enterprise House owners, 12 NAT’L L. REV. 314 (2022). On March 28, 2021, two days earlier than Kardashian filed her first SKKN BY KIM trademark software, Magnificence Ideas filed its personal trademark software for SKKN+. As a consequence of Kardashians’ outstanding movie star standing, coupled with the similarity between the 2 manufacturers names and items/companies, Magnificence Ideas alleges that SKKN BY KIM has overshadowed its model and precipitated confusion amongst customers between the 2 corporations.22Id.
The Lanham Act, ratified in 1946, serves because the premier supply of federal trademark regulation in the US.23Lanham Act, LEGAL INFORMATION INSTITUTE, https://www.regulation.cornell.edu/wex/lanham_act#:~:textual content=Thepercent20Actpercent20providespercent20forpercent20a,markpercent20ispercent20likelypercent20topercent20occur (final visited Feb. 3, 2023). To ascertain trademark infringement underneath the Lanham Act, the plaintiff should reveal that (1) they’ve a sound and legally protectable mark; (2) they personal the mark; and that (3) the defendant’s use of the mark to determine items or companies creates a probability of confusion for customers.2415 USC § 1125(a). Right here, parts (1) and (2) will not be at problem, as each Bieber and Kardashian have a sound mark that they personal. As a substitute, this dispute facilities across the probability of confusion that their respective marks could trigger inside industrial actions.
Courts use a number of elements to find out whether or not using a defendant’s trademark is confusingly comparable such that the products and/or companies are so interrelated that customers would mistakenly consider that the products and/or companies are the identical.25Supra, observe 4. Particularly, the Second Circuit has introduced eight “Polaroid elements” to think about when assessing if there’s a robust probability of shopper confusion.26New York Metropolis Triathlon, LLC v. NYC Triathlon Membership, Inc., 704 F.Supp.2nd 305, 314 (S.D.N.Y. 2010) (citing Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2nd 492, 495 (2nd Cir.1961)) These elements embody: “(1) the power of the plaintiff’s mark; (2) the similarity of the plaintiff’s and defendant’s marks; (3) the aggressive proximity of the services or products; (4) the probability that the plaintiff will ‘bridge the hole’ and supply a services or products much like the defendant’s; (5) precise confusion between the services or products; (6) good religion on the defendant’s half; (7) the standard of the defendant’s services or products; and (8) the sophistication of patrons.”27Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2nd 492, 495 (2nd Cir.1961). When adjudicating trademark infringement claims, courts weighs all eight of those elements.28Supra, observe 28. Whereas it’s tough to foretell the result of both case, analyzing the related Polaroid elements could permit us to make sound predictions.
For instance, the courtroom will have a look at the similarity between the respective marks. In Bieber’s case, RHODE and Rhode-NYC are fairly comparable; nevertheless, the marks point out the supply of various classes of products. Thus, the marks are unlikely to have aggressive proximity with one another out there, as they relate to totally different industrial areas. One attainable argument is that RHODE and Rhode-NYC will unlikely result in important confusion, regardless of the similarity of their marks, since each mark holders retain robust marks in vastly totally different classes. Kardashian’s mark can be much like the SKKN+ mark owned by Magnificence Ideas. The similarity between the 2 marks will increase the probability of precise confusion between the merchandise, which is unfavorable to Kardashian. Nevertheless, celebrities of such recognition and stature as Kardashian and Bieber have benefits that small companies lack, together with better monetary assets, robust authorized illustration, and the assist of tens of millions of followers. In mild of those benefits inherent in any high-profile case, the respective senior customers (Khatau and Vickers for Rhode-NYC and Magnificence Ideas for SKKN+) would want to current robust proof reflecting shopper confusion and any proof of dangerous religion by the junior customers.
As Bieber’s authorized journey continues, she has been granted a small victory by Choose Schofield who denied Rhode-NYC’s movement for a preliminary injunction.29Hailey Bieber’s Rhode Lands Win in First Spherical of Lawsuit over Model Identify, The Trend Regulation, June 25, 2022, https://www.thefashionlaw.com/hailey-biebers-rhode-wins-first-round-in-lawsuit-over-brand-name/. Particularly, the Choose states that the “proximity of the marks and their competitiveness with one another” weighed in favor of Bieber’s model, permitting her to proceed utilizing her mark in commerce.30Id. Each Bieber’s and Kardashian’s fits contain the idea of reverse confusion, which is a worry for small enterprise house owners within the magnificence and trend house, as bigger corporations dominate the market with their mark inflicting customers to consider the 2 marks are associated or affiliated with one another.31Supra, observe 4. Accordingly, the Rhode-NYC founders said that that they had no alternative however to file swimsuit towards Bieber’s skin-care line to guard its rising enterprise from a star with an immense following.32Emily Kirkpatrick, Choose Guidelines Hailey Bieber Can Proceed Selling Rhode Pores and skin-Care Line Amid Trademark Infringement Lawsuit, Self-importance Truthful, July 26, 2022, https://www.vanityfair.com/fashion/2022/07/hailey-bieber-rhode-skin-care-trademark-infringement-lawsuit-preliminary-injunction-denied. Magnificence Ideas has additionally adopted this “bottom-up” method in continuing with authorized motion towards Kardashian. In each instances, neither aspect seems to be backing down of their struggle to guard their companies and logos.
Written by: Anna Gordon and Danielle Schwartz
Anna and Danielle are 2024 J.D. Candidates at Brooklyn Regulation College
1 Lauryn Harris, Annotation, Too Little, Too Late: FTC Tips on “Misleading and Deceptive” Endorsements by Social Media Influencers, 62 How. L. J. 947 (Initially revealed in 2019).
3 Mykenna Maniece, Why Hailey Bieber and Kim Kardashian are Being Sued over their Magnificence Manufacturers, Betches, July 6, 2022, https://betches.com/why-hailey-bieber-and-kim-kardashian-are-being-sued-over-their-beauty-brands/.
4 Heather Antoine, Hailey Bieber’s New Skincare Line Welcomed with Infringement Lawsuit, Forbes, June 30, 2022, https://www.forbes.com/sites/legalentertainment/.
5 Danielle Cohen, Kim Kardashian is Being Sued Over SKKN, The Reduce, June 29, 2022, https://www.thecut.com/2022/06/kim-kardashian-skkn-lawsuit.
6 Supra, observe 4.
7 Margaret Blatz, Hailey Bieber’s Rhode Pores and skin is Getting a Entire Restock,Elite Dailey, Aug. 10, 2022, https://www.elitedaily.com/style/hailey-bieber-rhode-skin-2022-restock-details.
8 Supra, observe 4.
10 Get Able to Search – Classification and Design Search Codes, U.S. Pat. & Trademark Workplace (Sept. 21, 2022), https://www.uspto.gov/trademarks/search/get-ready-search-classification-and-design.
11 Supra, observe 4.
12 Supra, observe 7.
17 Rachel Askinasi, How Kim Kardashian constructed her $1.8 Billion Empire, Insider, Sep. 7, 2022, https://www.insider.com/photos-kim-kardashian-west-career-evolution-2019-2.
18 Press Launch, COTY, Kim Kardashian Launches SKKN by Kim, a New Line of Excessive-Efficiency Skincare in Partnership with COTY (Could 31, 2022).
20 Supra, observe 4.
22 David H. Siegel, Do you Know SKKN? No, Not that One. The Concern of Reverse Confusion for Small Enterprise House owners, 12 Nat’l L. Rev. 314 (2022).
24 Lanham Act, Authorized Info Institute, https://www.law.cornell.edu/wex/lanham_act#:~:text=The%20Act%20provides%20for%20a,mark%20is%20likely%20to%20occur (final visited Feb. 3, 2023).
25 15 USC § 1125(a).
26 Supra, observe 4.
27 New York Metropolis Triathlon, LLC v. NYC Triathlon Membership, Inc., 704 F.Supp.2nd 305, 314 (S.D.N.Y. 2010) (citing Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2nd 492, 495 (2nd Cir.1961))
28 Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2nd 492, 495 (2nd Cir.1961).
29 Supra, observe 28.
30 Hailey Bieber’s Rhode Lands Win in First Spherical of Lawsuit over Model Identify, The Trend Regulation, June 25, 2022, https://www.thefashionlaw.com/hailey-biebers-rhode-wins-first-round-in-lawsuit-over-brand-name/.
32 Supra, observe 4.
33 Emily Kirkpatrick, Choose Guidelines Hailey Bieber Can Proceed Selling Rhode Pores and skin-Care Line Amid Trademark Infringement Lawsuit, Self-importance Truthful, July 26, 2022, https://www.vanityfair.com/style/2022/07/hailey-bieber-rhode-skin-care-trademark-infringement-lawsuit-preliminary-injunction-denied.