Contributing author: Heather Antoine
In April 2015, Kylie Jenner filed a trademark application for the trademark “KYLIE” for “advertising services” and “endorsement services”. The app was meant to act as a stepping stone before Jenner launched her cosmetics line. However, Kylie Minogue objected to Jenner’s trademark application, citing her ownership and use of Kylie.com, which had been selling clothing, perfume and other products marketed under her name since August 1996 (a year before Jenner’s birth). The opposition was eventually withdrawn, and while it was not public, I can only assume that a settlement was reached, leading to the 194 trademark applications and registrations currently held by Jenner’s company, Kylie Jenner, Inc. Lesson learned, right? Bad.
On June 15, 2022, model and socialite Hailey Bieber officially launched her new venture “Rhode”, billed as an affordable, cruelty-free skincare line. The launch was announced to Bieber’s nearly 50 million followers, as well as 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 for trademark infringement (Rhode-NYC LLC v Rhodedeodato Corp. et al; 1:22-cv-05185, the “Complaint”). How did we come here? You may or may not have seen reports on this one before, but what makes it particularly interesting (at least for this IP nerd) is the backstory.
In 2014, former college roommates Purna Khatau and Phoebe Vickers (Rhode-NYC) quit their full-time jobs to start their own luxury clothing and accessories company, “Rhode.” As detailed by the complaint, “in the United States, Bergdorf Goodman, Neiman Marcus, and Saks Fifth Avenue all carry Rhode’s premium products, and Bloomingdales has dedicated a section of its New York flagship to the brand,” which has been worn by household names such as Beyoncé, Mindy Kaling and Maya Rudolph. Their projected profit for 2022 would be $14.5 million.
In 2017, Rhode-NYC obtained its first trademark registration for “RHODE” for various apparel. In March 2019, they filed another application for handbags, which was registered in early 2021. In June 2019, the company applied for a trademark registration for shoes, which is currently pending. Then, in 2020, the company filed several additional trademark applications to protect expanding sales of children’s wear, men’s wear, sunglasses, jewelry, blankets and textiles, hair accessories and miscellaneous items such as stuffed dolls, puzzles, candles and ornaments. They also filed a request to protect “retail store services”. It should be noted that Rhode-NYC has not filed any claims in Class 3 to protect the use or future use of beauty products.
Somewhat simultaneously, in November 2018, Bieber filed for “RHODE” in Class 25 for clothing. However, this request was denied due to risk of confusion with Rhode-NYC and was ultimately “expressly withdrawn”. It was reported that Bieber approached Rhode-NYC during this time to purchase the name and was turned down.
Then, in February 2020, Bieber filed an intent-to-use application intended to maintain its place in line for the possible use of “RHODE” in Class 3 for beauty products. This application was reviewed by a trademark examiner who found no likelihood of confusion with the Rhode-NYC trademarks. The application was released for opposition and Rhode-NYC did not oppose it. An application for the “RHODE” logo was also filed, approved for opposition and uncontested by Rhode-NYC. Bieber filed several other claims for HAILEY RHODE and HAILEY RHODE BEAUTY. According to the lawsuit, those demands led to correspondence in which Bieber’s attorneys explained that Bieber dropped his “RHODE” claim on the clothes after “my[king] decision . . . to abandon plans to create a line of clothing under the “RHODE” brand. At that time, one would have thought that the parties accepted the proposition that these two “Rhodes” could coexist as long as Bieber was not trying to sell clothes.
As a quick sidebar, the question we ask in trademark infringement cases is whether there is a “likelihood of confusion” between the marks. This analysis involves multiple factors, 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 (wrongly) that they come from a common source. For example, DELTA airlines and DELTA dental care are not likely to be a problem because no one would imagine that the airline would provide dental insurance.
Let’s get back to it. As I mentioned before, until this year, Bieber only had remaining or “living” Class 3 applications for “RHODE” as a stand-alone trademark and Rhode-NYC never filed an application. in Class 3. However, on May 16, 2022, Bieber filed a fairly extensive list of goods and services that would be provided under the “RHODE” brand, including clothing and footwear. If I was a gambler (and I knew I was from time to time), I guess that’s what sent Rhode-NYC to the brink. Although Rhode NYC may also have waited until the official launch of the product to file a lawsuit in Federal Court, rather than opposing the USPTO petition as Minogue did. However, I wonder why the decision was made to file for class 25 for apparel when Rhode-NYC already has a class 25 registration for apparel.
There’s no doubt that celebrity adds layers to trademark infringement cases. The public assumes and associates celebrity with “original” ownership, which can create problems for companies like Rhode-NYC. Since Bieber’s line was announced, Rhode-NYC says it has already noticed some confusion, including in their own ads and endorsements when people have mislabeled Bieber’s social media accounts.
Rhode-NYC is currently seeking a preliminary injunction ordering Bieber to stop using the name “RHODE” or any variation of its trademark.
Legal Entertainment has contacted the representation for comment and will update this story as needed.
Heather Anthony is Partner and Chair of Trademark and Trademark Protection and Data Privacy and Security Practices at Stubbs Alderton & Markiles LLP, where she protects the intellectual property of her clients, including the selection, management and trademark protection. Heather also helps companies design and implement policies and practices that comply with national and international privacy laws.