Kim Kardashian sued by SKKN+ owners for trademark infringement

Does all the press get good press? Not for Brooklyn-based skincare company Beauty Concepts using its SKNN+ brand. None other than Kim Kardashian is the subject of another controversial conversation. With the recent launch of her skincare brand SKKN By Kim, critics have accused Kardashian of stealing the “SKKN” name from black-owned beauty brands. Given Kardashian’s previous encounters with accusations of appropriating other cultures, the failure to rebrand her new venture comes as no shock. In 2019, the city of Kyoto urged Kardashian to rethink the name of its shapewear brand Kimono, explaining the cultural significance of the garment.

Consumers first compared SKKN By Kim to the existing brand SKN by Lori Harvey. Yet the public criticism has rocked social media and extended its reach to the courts, albeit with a completely different company, pitting Kardashian, her corporate entity Kimsaprincess Inc., against her cosmetics maker Coty, Inc., which owns a stake. 20% in Kardashian’s KKW. Beauty, v. Beauty Concepts LLC, a 4-year-old, Black, women-owned skincare company doing business as SKKN+, which opened a physical location after surviving the pandemic.

In a new trial at Eastern District of New York, Beauty Concepts vs. Kim Kardashian et al., 1:22-cv-03797 (EDNY) Beauty Concepts is suing for trademark infringement and unfair competition, reverse confusion, illegal deceptive acts and business practices in violation of New York Gen. Bus. Law §349-50 and other related claims against Kardashian and her co-defendants in connection with the SKKN by Kim trademark and use of the marks on goods and services which, according to the plaintiff, are “identical or closely related to the services offered by Beauty Concepts under [its own] SKKN+ brand.

Beauty Concepts began using the SKKN+ brand in August 2018 for its skincare products and services. Beauty Concepts says it learned of the defendants’ intention to launch a skincare line under the SKKN and/or SKKN BY KIM brand around July 2021 when Kardashian filed 17 trademark applications for SKKN BY KIM. On March 28, 2021, just two days before Kardashian filed its first “SKKN by Kim” applications, Beauty Concepts filed its own trademark application for “SKKN+”. Growing concerns over Kardashian’s entry into the market prompted Beauty Concepts to ask Kim and her partners “to drop their plans to use a brand that incorporates the most significant elements of Beauty Concepts’ SKKN+ brand, to know the letters ‘SKKN'”.

Prior to filing suit in the Eastern District, Beauty Concepts filed opposition proceedings before the USPTO’s Trademark Trial and Appeals Board in December 2021 to try to block four of the claims. defendants for the trademark SKKN BY KIM to be registered by the trademark office. In response, Kardashian’s attorneys attributed Beauty Concepts’ attempt to block Kardashian’s candidacy to “the misconception [that Beauty Concepts] holds the exclusive trademark rights to the term “skkn” for anything and everything related to beauty, cosmetics, hair or nails. Kardashian’s attorney went on to say that the descriptive nature of the mark does not warrant the exclusive rights, especially in light of the fact that “skkn” is just a misspelling of the term “skin.” .

Even with trademark applications delayed by oppositions, Beauty Concerns argues that the SKKN BY KIM on June 21st launch has already hurt small business. Mirroring fashion brand Rhode’s claims in the trademark lawsuit against Hailey Bieber’s recently launched skincare brand under the same name, Rhode-NYC, LLC v Rhodedeodato Corp. et al1:22-cv-05185 (SDNY) Beauty Concepts says Kardashian’s “prominent celebrity” status should “quickly eclipse[]”Beauty Concepts’ SKKN+, with Kardashian’s brand “on the verge of earning hundreds of millions of dollars in revenue under counterfeit SKKN brands.”

In addition to the likelihood that the defendants have already caused confusion due to the similarity between the marks and the goods and services they provide, Beauty Concepts argues that the defendants “further add to the likelihood of confusion” by “we[ing] and underline[ing] SKKN in their packaging and marketing. For example, “the trademark logo SKKN BY KIM also heavily emphasizes the term ‘SKKN’ and attenuates the words ‘by Kim'”, which “amplifies the likelihood of confusion between defendants’ trademark SKKN and SKKN + of Beauty Concepts brand.”

To succeed in its trademark infringement action, Beauty Concepts must establish that it owns a valid trademark entitled to protection; the defendants used the same or a similar mark in commerce in connection with the sale or advertising of goods or services without the consent of Beauty Concepts; and Defendants’ use is likely to create confusion as to Defendants’ affiliation, connection, or association with Beauty Concepts, or the origin, sponsorship, or endorsement of any goods, services, or activities defendants’ commercial activities by Beauty Concepts.

A likelihood of confusion between marks exists when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe that they come from the same source. In order to determine whether there is a likelihood of confusion, marks are examined for similarities and differences. The extent of this similarity – whether based on sound, appearance and/or meaning – “may be sufficient to support a finding of likelihood of confusion, depending on the connection between the goods and/or services “. In addition, courts use several factors to guide their analyses. The second circuit, for example, analyzes the likelihood of confusion using the factors set out in Polaroid Corp. vs. Polarad Elecs. Corp., 287 F.2d 492 (2nd Cir. 1961). These factors include the strength of the senior user’s brand, similarity of brands, similarity of products or services, likelihood that the senior user will close the gap and expand into the product line of the junior user, junior user’s intention to adopt the mark, evidence of actual confusion, sophistication of buyers, quality of junior user’s goods or services and related goods and services.

Beauty Concepts says the inevitable result of SKKN by Kim in the beauty market is reverse confusion. Reverse confusion occurs when a large junior user saturates the market and their brand becomes more prominent than the senior brand. While this claim isn’t particularly common, it remains one of the biggest fears of small business owners, especially in the beauty and retail industries. Beauty Concepts asserts that consumers expect to “acquire defendants’ products bearing the infringing SKKN marks and/or services performed using such products from Beauty Concepts.” Accordingly, Defendants’ use of the allegedly infringing Marks “has and will continue to interfere with the ability of Beauty Concepts customers and potential customers to seek and find information about Beauty Concepts, its physical location, SKKN+ services and the SKKN+ website and online marketing.”

Beauty Concepts notes the defendants’ already well-followed social media accounts on platforms like Instagram, Twitter and TikTok, which consist exclusively of the word @skkn without the “by Kim” element. In fact, “many social media users mistakenly tagged Beauty Concepts’ @skknplus social media accounts when referencing” defendants’ products. Due to significant consumer confusion, “Beauty Concepts’ Internet presence has been overwhelmed by defendants’ advertising, and Beauty Concepts has experience[d] actual confusion in the form of individuals contacting Beauty Concepts to ask if they are affiliated with defendants and their infringing SKKN marks.

With the foregoing in mind, Beauty Concepts seeks an injunction restraining the defendants from continuing to use the allegedly infringing SKKN by Kim trademark, as well as damages. Since the lawsuit was filed, Kardashian’s attorneys have issued a statement denying the facts underlying the dispute, saying they “look forward to bringing our case to court.”

©2022 Norris McLaughlin PA, All Rights ReservedNational Law Review, Volume XII, Number 203

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