Written by: Nick Holmes
This article will focus on the active case of trademark infringement with the well-known celebrity, Hailey Bieber, and her skincare product line, Rhodedeodato.
The New York based clothing store, Rhode-NYC, LLC (“Rhode”) filed a 47-page lawsuit against Bieber alleging trademark infringement and unfair market competition. According to the complaint filed in a federal court in New York, Rhode claims that Bieber’s health and skin care product line has unlawfully adopted and used their established trademarked name, jeopardizing their brand’s reputation and market presence.
The Rhode brand was created in 2014 by co-founders Purna Khatau and Phoebe Vickers. Over the past 10 years, Rhode has been adopted by luxury retailers and renowned celebrities like Vogue and Beyoncé, who have sold and showcased the brand, contributing to its successful growth in the fashion market. Rhode secured trademark registrations for its name on clothing and their accessories in hopes of expanding their market presence.
The legal dispute began when Bieber launched her skincare line in 2022, leveraging her global fanbase. Typically, trademark laws permit individuals to use registered trademarks in a non-commercial context, such as the review of a product, commentary on the product, or in comparison of a product. Commercial use, however, is restricted unless prior rights are acknowledged and permission is granted by the trademark holder. However, Rhode claims that Bieber and her legal team were already informed of the Rhode trademarks given that her team contacted them in hopes of acquiring the trademark. Rhode refused Bieber’s offer. However, Bieber ended up filing two applications with the United States Patent and Trademark Office for the intent to use the Rhode trademark as a word mark in addition to a logo for skincare products only. Rhode did not oppose either of the two applications at the United States Patent and Trademark Office. Oppositions are used by third-parties as an attempt to prevent registration of a mark that the party believes may cause harm to their already-existing trademark rights.
Rhode alleges that the launch of Bieber’s skincare line has impacted their business revenue. The potential for “reverse confusion,” where a junior trademark user saturates the market and swamps the reputation of the senior trademark user, creating the false impression that the senior user is actually infringing on the junior user, is emphasized, potentially eroding Rhode-NYC, LLC’s brand equity cultivated over the past 10 years. Furthermore, Rhode claims that due to Hailey’s social media following, and singer husband, Justin Bieber, her business poses a threat to Rhode’s established market presence.
Rhode fears that Bieber’s rumored expansion into apparel could further weaken their brand identity and jeopardize their potential for collaborations and market opportunities. In result of these alleged infringements, Rhode filed for injunctive relief to prevent Bieber’s use of the Rhode trademark and seeks damages for the harm caused since the launch of the skincare. The Judge in the case ruled against injunctive relief, asserting that Rhode failed to demonstrate a likelihood of success on the merits of its trademark claim. Bieber’s team, in response to this filing, filed cancellation proceedings at the Trademark Trials and Appeals Board against some of Rhode’s registrations, asserting that Rhode was not actually using its registered marks in connection with several of its registered goods. Rhode decided to drop the goods listed in Bieber’s cancellation bid, effectively preventing further litigation at the Trademark Trials and Appeals Board.
Earlier this month, news broke that Rhode and Bieber settled the lawsuit, without the exact terms being known. Presumably, a co-existence agreement of some sort was agreed upon by the two parties, which effectively allows each party to continue using their respective marks, as long as they remain in their specific channels of trade and products.
The lawsuit stresses the importance of protecting intellectual property in the competitive fashion and beauty industries, but also highlights a potentially alarming trend for senior trademark users who have created customer goodwill and brand awareness. With the eruption of e-commerce and the relative ease to enter the market, junior trademark users are finding it easier than ever to market their products by capturing trademark rights through federal registration, reverse confusion can be more easily defeated, as trademark registration is prima facie evidence of ownership of a mark.
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22-CV-5185 (AKH) (S.D.N.Y. Sep. 18, 2023)