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Contributing author: Heather Antoine
In April of 2015, Kylie Jenner filed a trademark application for the mark “KYLIE” for “advertising services” and “endorsement services.” The application was intended to serve as a stepping stone ahead of Jenner’s launch of her cosmetics line. However, Kylie Minogue famously opposed Jenner’s trademark application, citing her ownership and use of Kylie.com, which sold clothes, perfumes, and other products marketed with her name since August of 1996 (a year before Jenner’s birth). The opposition was eventually withdrawn, and while it was not public, I can only assume a settlement was reached, leading to the 194 trademark applications and registrations currently owned by Jenner’s company, Kylie Jenner, Inc. Lesson learned, right? Wrong.
On June 15, 2022, model and socialite Hailey Bieber officially launched her newest endeavor “Rhode,” billed as a cruelty-free, affordable skincare line. The launch was publicized to Bieber’s nearly 50 million followers, as well as to her husband, Justin Bieber’s 245 million followers. Less than a week later, on June 21, 2022, Rhode-NYC filed a lawsuit in 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 here? You may or may not have already seen some reporting on this one, but what makes it particularly interesting (at least to this IP nerd) is the back story.
In 2014, former college roommates Purna Khatau and Phoebe Vickers (Rhode-NYC) quit their full-time jobs to build their own luxury clothing and accessories business, “Rhode.” As detailed by the Complaint, “in the United States, Bergdorf Goodman, Neiman Marcus and Saks Fifth Avenue all carry Rhode’s high-end products, and Bloomingdales has devoted a section of its New York City Flagship to the brand,” which has been worn by household names such as Beyoncé, Mindy Kaling, and Maya Rudolph. Their forecasted profit for 2022 is allegedly $14.5 million.
In 2017, Rhode-NYC obtained their first trademark registration for “RHODE” for various items of clothing. In March of 2019, they filed another application for handbags, which registered in early 2021. In June of 2019, the company applied for a trademark registration for footwear, which is currently pending. Then in 2020, the company filed several additional trademark applications to protect expanding sales into children’s clothing, men’s clothing, sunglasses, jewelry, blankets and textiles, hair accessories, and miscellaneous items such as plush dolls, puzzles, candles, ornaments. They also filed an application to protect “retail store services.” Of note, Rhode-NYC has not filed any applications in Class 3 to protect use or future use of beauty products.
Somewhat simultaneously, in November of 2018, Bieber filed an application for “RHODE” in Class 25 for clothing. However, that application was refused based on likelihood of confusion with Rhode-NYC and was eventually “expressly withdrawn.” It has been reported that Bieber reached out to Rhode-NYC during this time to purchase the name and was refused.
Then, in February of 2020, Bieber filed an intent-to-use application intended to hold her place in line for the eventual use of “RHODE” in Class 3 for beauty products. That application was reviewed by a trademark examiner who did not raise any likelihood of confusion with Rhode-NYC’s marks. The application was published for opposition and Rhode-NYC did not oppose it. An application for the “RHODE” logo was also filed, cleared for opposition, and not opposed by Rhode-NYC. Bieber filed multiple other applications for HAILEY RHODE and HAILEY RHODE BEAUTY. According to the Complaint, these applications led to correspondence wherein Bieber’s lawyers explained that Bieber had abandoned its application for “RHODE” on clothing upon “ma[king] the decision . . . to drop plans to proceed with a line of clothing under the ‘RHODE’ brand.” At this time, one may have thought the parties accepted the proposition that these two “Rhodes” could coexist as long as Bieber did not attempt to sell clothing.
As a quick sidebar, the question we ask in trademark infringement cases is whether a “likelihood of confusion” exists between the marks. There are multiple factors in that analysis, but they include the degree of similarity between the marks at issue and whether the parties’ goods are sufficiently related that consumers are likely to assume (mistakenly) that they come from a common source. For example, DELTA airlines and DELTA dental are not likely to be problematic because no one would imagine the airline would provide dental insurance.
Back to it. As I mentioned before, up until this year, Bieber only had remaining or “live” applications in Class 3 for “RHODE” as a standalone mark and Rhode-NYC never filed an application in Class 3. However, on May 16, 2022, Bieber filed an fairly exhaustive list of goods and services that would be provided under the “RHODE” trademark, including clothes and footwear. If I were a betting woman (and I have known to be from time-to-time), my guess is that this is what sent Rhode-NYC over the edge. Although Rhode NYC may have also been waiting for the official launch of the product to sue in Federal Court, rather than oppose the application at the USPTO as Minogue did. Nevertheless, I wonder why the decision was made to file an application in Class 25 for clothing when Rhode-NYC already owns a registration in Class 25 for clothing.
There is no doubt that celebrity adds layers to trademark infringement cases. The public assumes and associates the celebrity with “original” ownership, which can create problems for businesses like Rhode-NYC. Since Bieber’s line has been announced, Rhode-NYC claims it has already noticed confusion, including in their own advertisements and endorsements when people have incorrectly tagged Bieber’s social media accounts.
Rhode-NYC is currently seeking a preliminary injunction ordering Bieber to stop using the name “RHODE” or any variation for her brand.
Legal Entertainment has reached out to representation for comment, and will update this story as necessary.
Heather Antoine is a Partner and Chair of Stubbs Alderton & Markiles LLP’s Trademark & Brand Protection and Privacy & Data Security practices, where she protects her client’s intellectual property – including brand selection, management, and protection. Heather also helps businesses design and implement policies and practices that are compliant with domestic and international privacy laws.