Oops, she did it again. Kim K is in the trademark news for registering a trademark similar to a trademark owned by a black-owned beauty business.
Early July, Kim Kardashian announced her cosmetic brand’s KKW beauty website would shut down on August 1st for a complete overhaul and rebrand. According to WWD, the rebrand has nothing to do with her divorce but everything to do with a $200 million licensing deal with Coty Inc. The deal will allow Kim K to expand her cosmetic empire to skincare, haircare, nail care, and personal care products. Come through intellectual property. While we are all about leveraging your intangible assets to increase your company’s revenue and value, last week we learned the rebrand possibly infringes on the trademark of black-owned skincare business, Beauty Concept, LLC.
The Legal Tea
Beauty Concept, LLC provides skincare salon services under the trademark SKNN + and has done so since August 1st, 2018. The company filed for federal trademark registration on March 28th, 2021.
Although Kim K announced her rebrand in July, her team filed for federal trademark registration for two applications on March 30th for SKKN by Kim. One application is for retail store services featuring skin, cosmetics, hair, nail, and beauty products, tools and accessories, etc. The second application is for beauty salon services, skin care services, nail salon services, hair salon services, health and beauty spa services, namely, cosmetic face and body care.
The challenges with SKKN by Kim are:
• it uses the dominant portion of the SKKN + trademark
• it identifies not only related services but the same skincare salon service as SKKN +
• SKKN + is actually using the trademark in commerce which gives it priority over the intent to use trademark application which was filed after the use began
Before you pull out the pitchforks, let’s discuss how something like this can happen. Skipping the trademark clearance search is the primary way filing a similar trademark can happen. A trademark clearance search is intended to reveal potential conflicting or saturated marks before you file your application. In this case, it was possible for a trademark clearance search using the USPTO’s TESS was done by KK’s legal team however, because the SKKN + trademark was filed a mere two days before their applications, it is likely the SKKN + application hadn’t hit the system yet.
Once you submit your application, it can take a few days or sometimes longer before it shows up publicly. This is why keeping your filing receipt is critical. Delayed processing is also why searching for common law uses is an integral part of the trademark clearance search. There are 100s of 1000s of businesses using unregistered trademarks. Their unregistered status doesn’t negate their trademark or their ability to challenge your trademark application later in the process.
There was so much to unpack that we had to break other points down in our podcast, Own Your Genius.
The challenge with the SKKN + trademark is that “skin” and the variation of spelling is a common trademark for skincare services and products. While there aren’t registered marks for SKKN, there are registered marks for SKN, SKIN, SKYN. The USPTO considers sound, appearance, and commercial impression when making a determination of likelihood of confusion. For example, the USPTO issued a final refusal for “SKN JNKY” for the likelihood of confusion with “NATURAL SKIN JUNKIE”. Despite the different spelling, the two marks are very similar.
Beauty Concepts, LLC did what every business owner, large or small, should do related to their intellectual property, defend it. The small company issued a cease and desist to mega-brand Kimsaprincess, Inc. The SKKN + trademark is still going through the registration process and currently waiting to be reviewed by an examining attorney. I’m looking forward to seeing how this turns out.
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