Infringing Influencers: Unpacking Celebrity Trademark Infringement Suits

Social media has revolutionized the way we interact with one another. In a digitally driven society, social media has dominated the marketing landscape due to the rise of celebrity influencers. Two of the most prominent celebrity influencers today are Kim Kardashian (“Kardashian”) and Hailey Rhode Bieber (“Bieber”). The term “influencer” is broadly defined by many as “individuals who have the power to affect purchase decisions of others because of their (real or perceived) authority, knowledge, position, or relationship.”¹[1]Lauryn Harris, Annotation, Too Little, Too Late: FTC Guidelines on “Deceptive and Misleading” Endorsements by Social Media Influencers, 62 How. L. J. 947 (Originally published in 2019). Influencers leverage their popularity on social media sites to endorse, advertise, and promote third-party products.²[2]Id. In June 2022, Kardashian and Bieber launched their respective, and heavily anticipated skin-care brands. Kardashian launched SKKN BY KIM while Bieber launched Rhode.³[3]Mykenna Maniece, Why Hailey Bieber and Kim Kardashian are Being Sued over their Beauty Brands, Betches, July 6, 2022, https://betches.com/why-hailey-bieber-and-kim-kardashian-are-being-sued-over-their-beauty-brands/. Since the launch of their respective companies, both SKKN BY KIM and Rhode have faced lawsuits related to alleged trademark infringement.⁴[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 Cut, June 29, 2022, https://www.thecut.com/2022/06/kim-kardashian-skkn-lawsuit.

On June 15, 2022, Bieber launched Rhode, her first foray in the beauty industry, as well as her first ever brand.⁵[6]Supra, note 4. After several years of development, Rhode launched its first three products and sold out within a few hours.⁶[7]Margaret Blatz, Hailey Bieber’s Rhode Skin is Getting a Whole Restock, Elite Dailey, Aug. 10, 2022, https://www.elitedaily.com/style/hailey-bieber-rhode-skin-2022-restock-details. However, less than a week after the launch, Purna Khatau (“Khatau”) and Phoebe Vickers (“Vickers”), principals of Rhode-NYC, filed a lawsuit against Bieber’s Rhode brand alleging trademark infringement.⁷[8]Supra, note 4.

In 2017, Rhode-NYC, LLC obtained its first trademark registration for a clothing line called Rhode.⁸[9]Id. When filing a trademark, the U.S. Patent and Trademark Office (USPTO) categorize products (or goods) and services into specific classes.⁹[10]Get Ready to Search – Classification and Design Search Codes, U.S. PAT. & TRADEMARK OFFICE (Sept. 21, 2022), https://www.uspto.gov/trademarks/search/get-ready-search-classification-and-design. Over the next several years, Rhode-NYC filed trademark applications for ICs including handbags and footwear (still pending), and for children’s clothing, men’s clothing, sunglasses, jewelry, blankets, textiles, and hair accessories, etc.¹⁰[11]Supra, note 4. To date, Rhode-NYC has not filed any trademark applications in IC 3, which covers Cosmetics and Cleaning Products.¹¹[12]Supra, note 7.

In February 2020, Bieber filed an “intent-to-use application intended to hold her place in line for the eventual use of ‘RHODE’ in IC 3 for beauty products.”¹²[13]Id. When USPTO’s Examining Attorney did not find any likelihood of confusion between Rhode-NYC and Bieber’s RHODE mark, her mark was published for opposition.¹³[14]Id. Rhode-NYC did not oppose the trademark application when Bieber’s RHODE mark was published.¹⁴[15]Id. Instead, Rhode-NYC filed a legal injunction citing infringement and unfair competition against Bieber’s RHODE brand.¹⁵[16]Id.

Similarly, Kardashian, the 41-year-old billionaire, has an extensive resume spearheading several collaborations with numerous brands as well as founding multiple companies.¹⁶[17]Rachel Askinasi, How Kim Kardashian built her $1.8 Billion Empire, Insider, Sep. 7, 2022, https://www.insider.com/photos-kim-kardashian-west-career-evolution-2019-2. However, one of Kardashian’s latest ventures into the beauty world, SKNN BY KIM, has landed her in the middle of a lawsuit accusing her of trademark infringement.¹⁷[18]Press Release, COTY, Kim Kardashian Launches SKKN by Kim, a New Line of High-Performance Skincare in Partnership with COTY (May 31, 2022). On June 21, 2022, Kardashian launched SKKN BY KIM through its direct-to-consumer website.¹⁸[19]Id. Following SKKN BY KIM’s launch, Beauty Concepts, a small beauty business, sued Kardashian, alleging infringement on the “trademarked name of a Brooklyn-based Black-owned small business called Beauty Concepts, which provides salon services under the title ‘SKKN+.’”¹⁹[20]Supra, note 4. Since August 2018, Beauty Concepts has used the SKKN+ logo for its Class 3 products and services, and they allege they only learned of SKKN BY KIM when Kardashian filed seventeen trademark applications in July 2021.²⁰[21]Id. Beauty Concepts claim includes “trademark infringement and unfair competition, reverse confusion, unlawful deceptive acts, and business practices in violation of New York Gen. Bus. Law § 349-50.”²¹[22]David H. Siegel, Do you Know SKKN? No, Not that One. The Fear of Reverse Confusion for Small Business Owners, 12 NAT’L L. REV. 314 (2022). On March 28, 2021, two days before Kardashian filed her first SKKN BY KIM trademark application, Beauty Concepts filed its own trademark application for SKKN+. Due to Kardashians’ prominent celebrity status, coupled with the similarity between the two brands names and goods/services, Beauty Concepts alleges that SKKN BY KIM has overshadowed its brand and caused confusion among consumers between the two companies.²²[23]Id.

The Lanham Act, ratified in 1946, serves as the premier source of federal trademark law in the United States.²³[24]Lanham Act, LEGAL INFORMATION INSTITUTE, https://www.law.cornell.edu/wex/lanham_act#:~:text=The%20Act%20provides%20for%20a,mark%20is%20likely%20to%20occur (last visited Feb. 3, 2023). To establish trademark infringement under the Lanham Act, the plaintiff must demonstrate that (1) they have a valid and legally protectable mark; (2) they own the mark; and that (3) the defendant’s use of the mark to identify goods or services creates a likelihood of confusion for consumers.²⁴[25]15 USC § 1125(a). Here, elements (1) and (2) are not at issue, as both Bieber and Kardashian have a valid mark that they own. Instead, this dispute centers around the likelihood of confusion that their respective marks may cause within commercial activities.

Courts use several factors to determine whether the use of a defendant’s trademark is confusingly similar such that the goods and/or services are so interrelated that consumers would mistakenly believe that the goods and/or services are the same.²⁵[26]Supra, note 4. Specifically, the Second Circuit has presented eight “Polaroid factors” to consider when assessing if there is a strong likelihood of consumer confusion.²⁶[27]New York City Triathlon, LLC v. NYC Triathlon Club, Inc., 704 F.Supp.2d 305, 314 (S.D.N.Y. 2010) (citing Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.1961)) These factors include: “(1) the strength of the plaintiff’s mark; (2) the similarity of the plaintiff’s and defendant’s marks; (3) the competitive proximity of the products or services; (4) the likelihood that the plaintiff will ‘bridge the gap’ and offer a product or service similar to the defendant’s; (5) actual confusion between the products or services; (6) good faith on the defendant’s part; (7) the quality of the defendant’s products or services; and (8) the sophistication of buyers.”²⁷[28]Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.1961). When adjudicating trademark infringement claims, courts weighs all eight of these factors.²⁸[29]Supra, note 28. While it is difficult to predict the outcome of either case, analyzing the relevant Polaroid factors may allow us to make sound predictions.

For example, the court will look at the similarity between the respective marks. In Bieber’s case, RHODE and Rhode-NYC are quite similar; however, the marks indicate the source of different categories of goods. Thus, the marks are unlikely to have competitive proximity with each other in the market, as they relate to different commercial areas. One possible argument is that RHODE and Rhode-NYC will unlikely lead to significant confusion, despite the similarity of their marks, since both mark holders retain strong marks in vastly different categories. Kardashian’s mark is also similar to the SKKN+ mark owned by Beauty Concepts. The similarity between the two marks increases the likelihood of actual confusion between the products, which is unfavorable to Kardashian. However, celebrities of such recognition and stature as Kardashian and Bieber have advantages that small businesses lack, including greater financial resources, strong legal representation, and the support of millions of followers. In light of these advantages inherent in any high-profile case, the respective senior users (Khatau and Vickers for Rhode-NYC and Beauty Concepts for SKKN+) would need to present strong evidence reflecting consumer confusion and any evidence of bad faith by the junior users.

As Bieber’s legal journey continues, she has been granted a small victory by Judge Schofield who denied Rhode-NYC’s motion for a preliminary injunction.²⁹[30]Hailey Bieber’s Rhode Lands Win in First Round of Lawsuit over Brand Name, The Fashion Law, June 25, 2022, https://www.thefashionlaw.com/hailey-biebers-rhode-wins-first-round-in-lawsuit-over-brand-name/. Specifically, the Judge states that the “proximity of the marks and their competitiveness with each other” weighed in favor of Bieber’s brand, allowing her to continue using her mark in commerce.³⁰[31]Id. Both Bieber’s and Kardashian’s suits involve the concept of reverse confusion, which is a fear for small business owners in the beauty and fashion space, as larger companies dominate the market with their mark causing consumers to believe the two marks are related or affiliated with each other.³¹[32]Supra, note 4. Accordingly, the Rhode-NYC founders stated that they had no choice but to file suit against Bieber’s skin-care line to protect its growing business from a celebrity with an immense following.³²[33]Emily Kirkpatrick, Judge Rules Hailey Bieber Can Continue Promoting Rhode Skin-Care Line Amid Trademark Infringement Lawsuit, Vanity Fair, July 26, 2022, https://www.vanityfair.com/style/2022/07/hailey-bieber-rhode-skin-care-trademark-infringement-lawsuit-preliminary-injunction-denied. Beauty Concepts has also followed this “bottom-up” technique in proceeding with legal action against Kardashian. In both cases, neither side appears to be backing down in their fight to protect their businesses and trademarks.

Written by: Anna Gordon and Danielle Schwartz
Anna and Danielle are 2024 J.D. Candidates at Brooklyn Law School