Contributing writer: Heather Antoine
Hailey Bieber’s new “Rhode” skincare line was instantly met with a trademark lawsuit from … [+] Rhode-NYC.
In April of 2015, Kylie Jenner filed a trademark utility for the mark “KYLIE” for “promoting providers” and “endorsement providers.” The utility was meant to function a stepping stone forward of Jenner’s launch of her cosmetics line. However, Kylie Minogue famously opposed Jenner’s trademark utility, citing her possession and use of Kylie.com, which offered garments, perfumes, and different merchandise marketed together with her identify since August of 1996 (a 12 months earlier than Jenner’s start). The opposition was finally withdrawn, and whereas it was not public, I can solely assume a settlement was reached, resulting in the 194 trademark purposes and registrations presently owned by Jenner’s firm, Kylie Jenner, Inc. Lesson realized, proper? Wrong.
On June 15, 2022, mannequin and socialite Hailey Bieber formally launched her latest endeavor “Rhode,” billed as a cruelty-free, reasonably priced skincare line. The launch was publicized to Bieber’s almost 50 million followers, in addition to to her husband, Justin Bieber’s 245 million followers. Less than per week later, on June 21, 2022, Rhode-NYC filed a lawsuit within the U.S. District Court for the Southern District of New York claiming trademark infringement (Rhode-NYC LLC v. Rhodedeodato Corp. et al; 1:22-cv-05185, the “Complaint”). How did we get right here? You could or could not have already seen some reporting on this one, however what makes it notably attention-grabbing (not less than to this IP nerd) is the again story.
In 2014, former school roommates Purna Khatau and Phoebe Vickers (Rhode-NYC) stop their full-time jobs to construct their very own luxurious clothes and niknaks enterprise, “Rhode.” As detailed by the Complaint, “within the United States, Bergdorf Goodman, Neiman Marcus and Saks Fifth Avenue all carry Rhode’s high-end merchandise, and Bloomingdales has devoted a piece of its New York City Flagship to the model,” which has been worn by family names corresponding to Beyoncé, Mindy Kaling, and Maya Rudolph. Their forecasted revenue for 2022 is allegedly $14.5 million.
In 2017, Rhode-NYC obtained their first trademark registration for “RHODE” for numerous gadgets of clothes. In March of 2019, they filed one other utility for purses, which registered in early 2021. In June of 2019, the corporate utilized for a trademark registration for footwear, which is presently pending. Then in 2020, the corporate filed a number of further trademark purposes to guard increasing gross sales into youngsters’s clothes, males’s clothes, sun shades, jewellery, blankets and textiles, hair equipment, and miscellaneous gadgets corresponding to plush dolls, puzzles, candles, ornaments. They additionally filed an utility to guard “retail retailer providers.” Of observe, Rhode-NYC has not filed any purposes in Class 3 to guard use or future use of magnificence merchandise.
Somewhat concurrently, in November of 2018, Bieber filed an utility for “RHODE” in Class 25 for clothes. However, that utility was refused based mostly on chance of confusion with Rhode-NYC and was finally “expressly withdrawn.” It has been reported that Bieber reached out to Rhode-NYC throughout this time to buy the identify and was refused.
Then, in February of 2020, Bieber filed an intent-to-use utility meant to carry her place in line for the eventual use of “RHODE” in Class 3 for magnificence merchandise. That utility was reviewed by a trademark examiner who didn’t elevate any chance of confusion with Rhode-NYC’s marks. The utility was revealed for opposition and Rhode-NYC didn’t oppose it. An utility for the “RHODE” brand was additionally filed, cleared for opposition, and never opposed by Rhode-NYC. Bieber filed a number of different purposes for HAILEY RHODE and HAILEY RHODE BEAUTY. According to the Complaint, these purposes led to correspondence whereby Bieber’s attorneys defined that Bieber had deserted its utility for “RHODE” on clothes upon “ma[king] the choice . . . to drop plans to proceed with a line of clothes below the ‘RHODE’ model.” At this time, one could have thought the events accepted the proposition that these two “Rhodes” might coexist so long as Bieber didn’t try to promote clothes.
As a fast sidebar, the query we ask in trademark infringement circumstances is whether or not a “chance of confusion” exists between the marks. There are a number of components in that evaluation, however they embody the diploma of similarity between the marks at difficulty and whether or not the events’ items are sufficiently associated that buyers are more likely to assume (mistakenly) that they arrive from a typical supply. For instance, DELTA airways and DELTA dental aren’t more likely to be problematic as a result of nobody would think about the airline would supply dental insurance coverage.
Back to it. As I discussed earlier than, up till this 12 months, Bieber solely had remaining or “reside” purposes in Class 3 for “RHODE” as a standalone mark and Rhode-NYC by no means filed an utility in Class 3. However, on May 16, 2022, Bieber filed an pretty exhaustive listing of products and providers that might be offered below the “RHODE” trademark, together with garments and footwear. If I have been a betting girl (and I’ve identified to be from time-to-time), my guess is that that is what despatched Rhode-NYC over the sting. Although Rhode NYC could have additionally been ready for the official launch of the product to sue in Federal Court, somewhat than oppose the applying on the USPTO as Minogue did. Nevertheless, I ponder why the choice was made to file an utility in Class 25 for clothes when Rhode-NYC already owns a registration in Class 25 for clothes.
There is little doubt that celeb provides layers to trademark infringement circumstances. The public assumes and associates the celeb with “unique” possession, which might create issues for companies like Rhode-NYC. Since Bieber’s line has been introduced, Rhode-NYC claims it has already seen confusion, together with in their very own commercials and endorsements when individuals have incorrectly tagged Bieber’s social media accounts.
Rhode-NYC is presently looking for a preliminary injunction ordering Bieber to cease utilizing the identify “RHODE” or any variation for her model.
Legal Entertainment has reached out to illustration for remark, and can replace this story as mandatory.
Heather Antoine is a Partner and Chair of Stubbs Alderton & Markiles LLP’s Trademark & Brand Protection and Privacy & Data Security practices, the place she protects her consumer’s mental property – together with model choice, administration, and safety. Heather additionally helps companies design and implement insurance policies and practices which are compliant with home and worldwide privateness legal guidelines.