If we were to ask you to name a celebrity that hasn’t launched their own beauty or skincare brand, it might prove more difficult than you might have initially realised.
Hailey Rhode Bieber, the well-known model married to singer Justin Bieber, is the latest celebrity to join the rank of stars launching their own skincare lines this year. Mrs. Bieber is widely known to openly express her love for skincare with her first ever YouTube video ‘Skin Prep For Work’ that gained a whooping 4.2 million views on her 1.73 million subscriber YouTube channel (see below screenshot of Hailey Bieber’s YouTube channel).
(Source: https://www.youtube.com/c/HaileyRhodeBieber/featured )
However, her new skincare brand ‘rhode skin’ that only launched last week has been on the receiving end of a Trademark infringement lawsuit. Unaffiliated fashion label “RHODE”’ and their companies’ RHODE-NYC, LCC (the “plaintiffs”) have argued that Ms. Bieber and her companies’ RHODEDEODATO CORP. and HRBEAUTY, LCC d/b/a RHODE (the “defendants”) are co-opting the “RHODE” name and have pointed to evidence of confusion among consumers on Instagram, who have been tagging the wrong “RHODE” in photos. The plaintiffs have also maintained that they have continuously used the brand name of “RHODE” for eight (8) years and have garnered media attention from the likes of Vogue and sold their wares by online retailers such as e-commerce giant NET-A-PORTER (see below screenshot of the Home Page of the “RHODE” clothing brand website).
(Source: https://shoprhode.com/ )
It has also been alleged by the plaintiffs that in November 2018, right after the defendants filed for a word Trade Mark application with the U.S. Patent and Trademark Office (the “USPTO”) for “RHODE” (Registration number: 6539188) in classes 24, 25, 26, and 28 for various goods including women’s and children’s clothing, “counsel for Mrs. Bieber contacted counsel for the “RHODE” plaintiffs … and offered to buy the plaintiff’s Trade Mark registration”, having “clearly recongised the plaintiff’s priority rights to the use of the word “RHODE”.
The legal representatives for the defendants have recently filed for four (4) intent-to-use word Trade Mark applications for “RHODE” (Registration number: 97413184), “HAILEY RHODE” (Registration number: 97413189), “RHODE GLAZE” (Registration number: 90808725), and “THE RHODE FUTURES FOUNDATION” (Registration number: 97414878), which are still pending registration before the USPTO.
It is without question that Mrs. Bieber’s online fame has afforded her a considerable platform and competitive advantage to sell and promote products to her devoted fans. However, it is the “RHODE” plaintiff’s argument that Mrs. Bieber’s new, Trade Mark-infringing brand will likely confuse the marketplace and in time, destroy the reputation and goodwill of the “RHODE” clothing brand.
It will be very interesting to see how the counsel for Mrs. Bieber responds to this Trade Mark infringement allegation, and we will be keeping a very close eye on how these proceedings eventuate.
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Trademark law is the best area of IP law that offers protection, strategy, and leverage. Here at IP Partnership Lawyers, our team of solicitors are experts in Trademark registrations in both Australia and internationally, and we also assist clients with Trademark oppositions and the removal of Trademarks. Please contact us to discuss further.
Disclaimer
This blog provides general information and is not intended as legal advice specific to your circumstances. Please feel free to seek our professional legal advice if you have any particular questions, concerns and/or queries.
