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Practical IP The Intellectual Property Law Blog

The Importance of Searching and Protecting Brand Names

Posted in IP Ownership, Litigation, Trademarks

The Kardashian sisters’ recent launch of their KHROMA cosmetics and beauty care product line has caused a bit of a stir.

The sisters (through their licensing company, Boldface Licensing + Branding) applied with the U.S. Patent and Trademark Office (“USPTO”) in early June 2012  for registration of the marks KARDASHIAN KHROMA and KHROMA BEAUTY BY KOURTNEY, KIM AND KHLOE, both for personal care products including cosmetics, body and beauty care products based on an intent to use the mark in commerce.  The USPTO issued Office Actions in September 2012 refusing registration of the marks based on likelihood of confusion with an existing registration for the mark KROMA for use in connection with cosmetics owned by Florida-based makeup artist Lee Tillett, who claims to have been using the mark in commerce since March 2004 and whose trademark registration issued on January 3, 2012.

It appears that an attorney was involved with the filing of the Kardashians’ applications, so one would assume that the attorney perform a search to see whether there were any identical or similar marks already registered with the USPTO and/or already in use in the marketplace for the same or related goods or services.  Whether a search was performed or not, the sisters proceeded to file trademark applications and — even after receiving the registration refusal – actually launch their cosmetics line in late 2012, and their products are currently available in CVS, K-Mart, Sears and Ulta stores.

Now, the Kardashians are being sued for trademark infringement by Tillett (who is demanding $10 million in damages), and are also being sued by the owners of Chroma Makeup Studio in Beverly Hills claiming trademark infringement of their common law (aka, unregistered) trademark rights.

There do appear to be a number of mark co-existing on the USPTO Trademark Register that contain the term CHROMA for use with personal care products, so it’s not clear how the courts will come out on either of these lawsuits.  (NOTE: In the trademark world, the terms KHROMA, CHROMA, and KROMA are viewed as identical, because they are pronouced the same, look similar, and are mere misspellings of the same word, which apparently means “color” in Greek.)  It may be that the mark CHROMA, regardless of how it’s spelled, is somewhat dilute or frequently used for personal care products, so the addition of the terms KARDASHIAN or BEAUTY BY KOURTNEY, KIM AND KHLOE to the KHROMA marks is sufficient to distinguish the Kardashians’s KHROMA marks from other CHROMA or KROMA marks in the marketplace for similar products.

However, there are lessons to be learned from both sides of this battle.

For the Kardashians, to avoid getting sued in the future, in addition to performing trademark searches for potential marks before launching a product line, I would recommend that they attempt to come up with a truly unique name to prevent any likelihood of consumer confusion with similar marks that may already be used in the marketplace, registered in one or more Secretary of State offices, and/or registered with the USPTO for use in connection with the same or highly related goods or services.

For U.S. trademark registration owner Lee Tillett, I would recommend that she be vigilant in policing her mark and enforcing her trademark rights against identical or confusingly similar marks used in connection with identical or highly related goods and services.  This is especially true in this instance where the lesser-known Lee Tillett, who is the senior/initial user of the KROMA mark, could become the victim of “reverse confusion.”

Typically, trademark infringement occurs when a second party (or junior user) starts using a mark that is likely to confuse consumers as to some sort of affiliation with the better known senior user of the same or similar mark.  In this instance, the junior user (whether intentionally or not) benefits from the reputation and goodwill of the senior user.  However, “reverse confusion” occurs when a more powerful junior user (say, the Kardashians) uses the same or similar mark of a smaller, less powerful senior user (say, Lee Tillett).  “In a reverse confusion situation, rather than trying to profit from the senior user’s mark, the junior user saturates the market and ‘overwhelms the senior user.’”  3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:10 (2006).  In other words, because of the Kardashians’ fame and connections, they are likely to swamp the marketplace with their KHROMA cosmetics to such a widespread extent that consumers would actually mistakenly believe that Tillett’s KROMA cosmetics are somehow associated with the Kardashians.

Finally, with respect to Chroma Makeup Studio in Beverly Hills, I would have recommended that they file trademark applications with the USPTO in order to obtain nationwide rights in their mark instead of attempting to rely on common law trademark rights.  Additionally, if they were planning to create a makeup line using their CHROMA mark, I would have recommended that they file an intent-to-use application with the USPTO to reserve the mark and prevent third parties from registering identical or confusingly similar marks during the time Chroma Makeup Studio was developing its cosmetics line.

Click here for more information about the Kardashian KHROMA disputes.