It’s official: in line with our initial prediction, the Kardashians have renamed their makeup brand, initially launched as “Khroma Beauty,” to “Kardashian Beauty” to avoid any potential customer confusion.
This decision comes less than two months after a preliminary injunction issued by a California Court based on the trademark infringement suit filed by Florida-based cosmetics company, Kroma Makeup.
The brand’s licensor is “confident that it’s not the name that matters to [the label’s] fans, but the Kardashian sisters’ commitment to making this line a true reflection of their love for cosmetics.” In light of the tremendous empire the Kardashian sisters have built over the last decade, replacing the brand’s old name with the valuable Kardashian name could increase the value of the brand itself.
With the announcement of the rebranding of the makeup line, Kardashian Beauty will proceed with its expanded availability in Duane Reade, CVS, and Sears retail outlets across the country in two to three weeks.
According to Facebook, Inc.’s most recent SEC filing, it has reached a settlement agreement with Timelines Inc. in the trademark case Timelines filed against the social network.
Timelines operates a website, Timelines.com, that permits its users to create, collaborate on, and share historical chronologies. The Chicago-based company founded in January 2007 has registered trademarks for “Timelines,” “Timelines.com” and the “Timelines” logo. In September 2011, Facebook premiered a new profile page for its users showcasing a “timeline” feature; Timelines promptly sued for trademark infringement.
In filing suit, Timelines sought to enjoin Facebook from using the term “timeline” and requested damages in the amount of any advertising revenues Facebook generated on any of its timeline pages. Requesting summary judgment, Facebook argued that its use of “timeline” qualified as fair use because the term itself is generic, and requested that the trademark for the word “Timelines” be altogether canceled for that reason. The U.S. District Court for the Northern District of Illinois denied the motion, scheduling the case for a jury trial in late April, which was subsequently delayed without reason.
In the meantime, pursuant to Facebook’s most recently-released 10-Q, the parties appear to have settled:
“We are also party to various legal proceedings and claims which arise in the ordinary course of business. Among these legal matters, in two cases, Summit 6 LLC v. Research in Motion Corporation et al., and Timelines, Inc. v. Facebook, Inc., we have reached agreements to settle the matters. The cost of settlement in each case, which is included in the accompanying condensed consolidated financial statements for the three months ended March 31, 2013, was not material to our business, financial condition, or results of operations.”
The particulars of the settlement agreement have not been provided, though it appears that Facebook will be permitted to continue use of its timeline feature and name on its users’ profile pages. Facebook users, rejoice: for now, it appears as though your Facebook timelines will remain intact.
For the last 13 years, Zurich confectioner Lindt has been at war with German chocolatier Confiserie Riegelein in an effort to prevent it from selling similarly gold-foil-wrapped chocolate bunnies. The battle, which began in 2000, ended this past Thursday when Germany’s Federal Court of Justice rejected Lindt’s final appeal to protect its popular holiday treat, the Goldbunny. The decision determined that it was not legally possible to trademark a gold-foil-wrapped chocolate bunny that had been in general use for decades, even though Lindt has been selling Goldbunnies since 1952.
This decision follows one made by the European Union Court of Justice, which upheld EU trademarks agency OHIM’s decision to reject Lindt’s application to trademark its classic sitting bunny wrapped in foil with a red ribbon bow tie. Its reasoning was that the Goldbunny was devoid of any distinctive character. Despite this, Lindt has had some success in protecting its Goldbunnies. Just last year, an Austrian court ruled that chocolatier Hauswirth could no longer produce Easter bunnies that look similar to Lindt’s.
Trademark owners have a new weapon in the battle against cybersquatters, just in time for the expected approval this year of over 1000 new generic Top Level Domains (gTLDs) such as .app, .news and domains in non-Latin script.
ICANN has launched the Trademark Clearinghouse (TMCH), a central database where trademark owners can register their trademarks for 3, 5 or 7 years at a cost of $95 to $150 per trademark per year. Costs depend on the number of trademarks and length of registration with the TMCH.
Before the TMCH, trademark owners seeking to protect their trademarks from cybersquatters were forced to register all the applicable top-level domains. While the TMCH does not cover Top Level Domains such as .com, .net and .org and only alerts trademark owners of exact matches (not misspellings of trademarks or “trademark + additional term” variations), it serves as a “one stop shop” trademark database and alert system for the new gTLDs. So what exactly are the benefits?
Trademark owners who register their trademarks with the TMCH will receive notification if a third party registers a new gTLD for an identical trademark within a 60-day Trademark Claims period following Sunrise Registration. Such early notification allows trademark owners to take prompt action against infringers.
Additionally, new gTLDs must provide a 30-day Sunrise Registration period during which trademark owners can register for the new gTLDS ahead of the general public. Only trademarks recorded in the TMCH may be registered as new gTLD domain names during Sunrise Registration.
Brand owners should strongly consider taking advantage of the TMCH. If you have any questions or require assistance, please contact us.
Designer Tory Burch, whose signature TT gold monogram graces the shoes and handbags of well-dressed women everywhere, filed an infringement lawsuit in New York on Friday against Bluebell Accessories, Inc. Burch claims the New York wholesaler sold counterfeit products displaying Burch’s monogram via BluebellWholesale.com. According to several media reports, Burch first investigated Bluebell back in November 2012, hiring an investigator to buy knock-off jewelry and sending a cease and desist letter to Bluebell owners Jessica Min and Sung Ki Min. Bluebell apparently withheld details of its business, including sale documentation and supplier lists, and Burch is now suing for an undisclosed amount, claiming trademark counterfeiting, false designation of origin and false descriptions, trademark and copyright infringement, trademark dilution, unfair competition, and injury to business reputation.
This isn’t the first time Burch has gone after counterfeiters for trademark infringement and counterfeiting. In 2011, Burch won $164 million in a suit filed in the U.S. District Court for the Southern District of New York against cybersquatters selling fake Tory Burch merchandise. The offending domain names included DiscountToryBurch.com, CheapToryBurchs.com, and Tory-Burch.us.
That amount was said to be the largest damages award granted to a fashion company in a counterfeiting action. The court didn’t stop there. The cybersquatters’ domain names were shut down and transferred to Burch, who was also granted the right to shut down any other websites the defendants create in the future without having file a subsequent lawsuit. Defendants were ordered to turn over the funds in their PayPal accounts to Burch as partial payment of damages. The court also enjoined Internet Service Providers, domain name registrars and third party selling platforms from providing services to any defendant for use in connection with infringement of Burch’s rights.
A powerhouse in the fashion world, Burch started her designer career creating tunics in her kitchen in 2004. In 2006, the Burch brand exploded with the launch of her most recognizable product, the $195 “Reva” ballet flats. Burch skyrocketed even higher in 2010 when Oprah added the Reva flats to her list of Favorite Things. In January 2013, Forbes magazine estimated Burch’s net worth at $1.0 billion dollars.
Having assessed key sales statistics showing that Kroma’s sales have dropped 25% since the Kardashians launched their similarly-named Khroma Beauty brand, Judge Audrey Collins of the District Court for the Central District of California issued a preliminary injunction.
The injunction will prevent Boldface Licensing + Branding, Khroma’s licensing company, from selling the Khroma line until the legal matter is resolved. To support its injunction, the court cited to its expectation that, “in short order, the Khroma Beauty products will likely eliminate [Kroma]’s business entirely, creating irreparable harm sufficient to justify an injunction.”
Though the Khroma Beauty line, until now, has been exclusively available through beauty retailer Ulta, this decision will prevent Khroma from being sold at Duane Reade, CVS, Sears and other mainstream drugstores, where it was scheduled to be sold later this month.
This preliminary injunction seems right on trend with our initial prediction that the Kardashians’ Khroma Beauty line will soon need to rebrand.
Tiffany and Company, a wholly owned subsidiary of Tiffany & Co. (NYSE: TIF) recently filed a lawsuit against Costco Wholesale Corporation to prevent Costco from selling counterfeit diamond engagement rings under the Tiffany brand and trademark. The complaint was filed in the U.S. District Court for the Southern District of New York and alleges trademark infringement, dilution, counterfeiting, unfair competition, injury to business reputation, false and deceptive business practices and false advertising.
Tiffany was tipped off last November when one of its customers alerted the company to an in-store promotion at a Costco in Huntington Beach, California. The Costco sign stated that “Tiffany” diamond engagement rings were being sold at the warehouse.
According to the Tiffany & Co. press release, Costco was well aware that it was infringing. “We now know that there are at least hundreds if not thousands of Costco members who think they bought a Tiffany engagement ring at Costco, which they didn’t. Costco knew what it was doing when it used the Tiffany trademark to sell rings that had nothing to do with Tiffany. This is not the kind of behavior people expect from a company like Costco, and this case will shed a much needed light on this outrageous behavior,” said Jeffrey Mitchell of Dickstein Shapiro, Tiffany’s counsel in the case.
The luxury jeweler hopes to “right a terrible wrong” and, like so many other big brands, vigorously guards its IP from counterfeiters and infringers.
Costco officials had “no comment” on the lawsuit and stopped marketing Tiffany rings after the company approached them.
Yesterday, Brazil’s National Institute of Industrial Property (INPI) rejected Apple’s trademark application for iPhone for use in connection with smartphones, citing local company Gradiente Eletronica SA’s prior ownership of a similar trademark. Apple has already appealed the ruling and requested cancellation of Gradiente’s trademark registration on the grounds that the company did use the trademark within the mandatory five year period.
Brazil is a “first to file” country in which trademark registrations are awarded to the first entity to file an application, regardless of who used the trademark first. Gradiente filed an application for the trademark G GRADIENTE IPHONE for cell phones in 2000, over six years before Apple filed applications for its iPhone trademark in Brazil and launched its now-famous iPhone smartphone. Gradiente’s trademark application was approved for registration in January 2008 but the company waited until December 2012 to start selling iPhone-branded phones running on Google’s Android operating system. According to Gradiente, the phones are available through the company’s website and at a store in Sao Paulo. Gradiente’s delay in bringing an iPhone-branded product to market is a key factor in Apple’s request for cancellation. According to Brazilian trademark law, a registered trademark must be used in commerce during the five years following registration or it becomes vulnerable to cancellation based on non-use. As a result of Apple’s challenge, Gradiente must now submit actual proof that it used the trademark between January 2008 and January 2013. It remains to be seen whether the company’s December 2012 launch is enough to prevail.
According to an INPI representative, Apple can still take its case to court or negotiate an out-of-court settlement with Gradiente. It wouldn’t be the first time Apple has settled with other companies over trademarks. In 2007, Apple reached an agreement in an trademark infringement suit with Cisco Systems over the iPhone trademark for an undisclosed amount. Just last year, Apple paid $60 million to Chinese company Proview Technology for the rights to the iPad trademark in China.
We will keep you updated as this story develops.
The latest point in the years-running match between Polo Ralph Lauren and the U.S. Polo Association (the “USPA”) went to Ralph Lauren, when earlier this week the Second Circuit of the U.S. Court of Appeals enjoined the USPA from using its “Double Horsemen” polo player mark on cosmetics or fragrances. Read the full text of the opinion here.
Historically, the courts have sided with the USPA in this feud over polo player marks, which dates back almost thirty years to 1984.
In that first face-off, the USPA’s predecessor won the right to produce licensed sporting wear using its Double Horsemen logo because it was not likely to create any confusion with Ralph Lauren’s well-known Polo-marked apparel. This is despite the fact that Ralph Lauren had featured – and continues to feature – its own famous polo player image on fragrances and apparel since 1978.
Two decades later, in 2006, a jury determined that the USPA’s use of the logo on licensed clothing did not infringe Ralph Lauren’s marks so long as its Double Horsemen mark was either displayed as an outline (i.e., not a solid image) or was accompanied by the “U.S.P.A.” letters. The Second Circuit later upheld that ruling.
This round, the dispute stemmed from Ralph Lauren’s Polo Blue fragrance, which it introduced to the market in 2002. In 2009, the USPA designed a men’s fragrance with similar dark blue packaging that used the Double Horsemen logo and “POLO” mark. Unlike its 2006 decision, however, the Second Circuit banned the USPA from using its Double Horsemen and POLO marks in connection with any cosmetics or fragrances, upholding the lower court’s determination. The Second Circuit reasoned that use of the USPA’s marks in the fragrance/cosmetics space infringed Ralph Lauren’s trademark rights, and constituted unfair competition. Rejecting the USPA’s reliance on past favorable rulings, the Second Circuit reasoned that just because the USPA was authorized to use its Double Horsemen logo in the apparel market did not necessarily mean that it acted in good faith using the same marks in selling men’s cologne.
And so the battle continues. For now, though, it appears that Ralph Lauren may be able successfully to keep the USPA’s Double Horsemen logo out of markets for competing products except for apparel, which could cause a problem for the USPA in its efforts to expand the use of its logo for new products and services.
It comes as no surprise that Apple owns numerous trademarks for its well-known Mac, iPod, iPhone, iPad and other products. However, Apple has taken its trademark protection to a new level by obtaining a registration for the look and lay-out of its unique glass stores.
Historically, retail store interiors have been protectable as unregistered trademarks and trade dress. Trade dress is considered a sub-category of trademarks and is generally defined as the image, design or appearance of a product or its packaging. Examples of trade dress include a four-sided freestanding rotating rack used to display greeting cards, the visibility of food preparation areas in restaurants and even particular sales techniques.
Apple likely has a strong trade dress claim to the design and lay-out of its stores and this new trademark registration only strengthens its position. Other companies have also obtained trademark registrations for the design of their stores, including Microsoft and its store lay-out seen here:
Apple’s trademark registration, granted on January 22, 2013, covers retail stores and product demonstrations and features a line drawing depicting a typical Apple store. The store is described as “a clear glass storefront surrounded by a paneled facade consisting of large, rectangular horizontal panels over the top of the glass front, and two narrower panels stacked on either side of the storefront.” But it doesn’t stop there. The registration also sets forth specific fixtures found in Apples stores including the “rectangular recessed lighting units,” the “cantilevered shelves below recessed display spaces” and the “rectangular tables arranged in a line in the middle of the store parallel to the walls.”
It was by no means a straight shot to registration at the USPTO. The mark was rejected twice for lack of inherent distinctiveness and failure to function as an indicator of source. According to the USPTO, although the company’s stores consistently use a “spare Scandinavian-inspired theme” they varied widely in appearance, ranging from the “entirely-glass flagship store in Manhattan, entirely glass-fronted stand-alone stores, entirely silver-panel-fronted stand-alones, and enclosed shopping mall bays of varying widths.”
Apple fired back with a claim that its mark had acquired distinctiveness, filing almost 700 pages of arguments including photographs, consumer surveys and affidavits from shoppers attesting to how easily-recognizable Apple stores are. Perhaps most impressive was testimony that the average annual revenue of each Apple store was $26.2 million in FY2009, $34.1 million in FY2010 and $43.3 million in FY2011. Apple successfully argued that even if the sales had taken place at only one retail location featuring Apple’s mark, such high sales volume would be more than adequate to establish the secondary meaning in the mark.
The take-away for business owners? A “trademarked look” is not just a popular saying. Developing and consistently using a distinctive look and lay-out for products and services, including retail stores, is a protectable form of intellectual property and a great way for customers to remember exactly who you are.