Ariel Goldberg is an incoming 1L JD candidate at Osgoode Hall Law School.
While Hailey Bieber’s new skin care brand promises “” the brand itself has a blemish: . On June 21,2022, Rhode-NYC, LLC. (“Rhode-NYC”) in the U. S. District Court for the Southern District of New York against Hailey Bieber and her companies RHODEDEODATO CORP. and HRBEAUTY, LLC for trademark infringement. Rhode-NYC is a founded by two women entrepreneurs in 2014, whereas Hailey Bieber’s launched in June 2022 during .
Rhode-NYC that Hailey Bieber’s use of her middle name “Rhode” as the name of her skin care brand is creating market confusion and potential harm to its goodwill and reputation. Rhode-NYC claims that for “rhode” were immediately populated by Hailey Bieber and her companies’ brand as evidence of source confusion. consumers are tagging the wrong Rhode brand on Instagram content. This is a case of where the junior user of a similar mark, usually with more resources, creates confusion that a senior’s goods and services originate from the junior user. Hailey Bieber d her fame and social media following, and that of her husband Justin Bieber’, to immediately establish her brand.
Hailey Bieber and her companies’ trademark applications’ history suggests an awareness of Rhode-NYC’s prior trademark rights and the brand confusion that would result from the existence of both brands. , Hailey Bieber and her companies attempted to purchase the RHODE mark from Rhode-NYC after filing an application with the US Patent and Trademark Office (“USPTO”) for the use of “Rhode” on clothing. Then, , Hailey Bieber and her companies filed an intent-to-use trademark application for RHODE as a word mark and stylized word depiction for use in skin care. Notably, Rhode-NYC the 2020 application.
While the two brands registered the RHODE mark for different uses under the system, that expansion of either brand increases the potential for harm because the uses are in adjacent industries. Hailey Bieber and her companies are filing trademark applications outside cosmetics and promising Rhode clothing. Following the of celebrity brands, Hailey Bieber’s Rhode is unlikely to remain in the realm of skin care. For example, the beauty brand developed the line which includes apparel and accessories such as a hoodie. In addition, that Hailey Bieber and her companies’ use of the RHODE mark prevents Rhode-NYC’s own intentions to enter the beauty and lifestyle market.
The lawsuit over the RHODE mark demonstrates the trademark implications of the rise of celebrity brands. Specifically, how celebrities’ existing fame impacts secondary meaning and the importance of considering trademark rights in industries that would be a natural extension of a brand. Ultimately, Rhode-NYC co-founders are only attempting to protect their brand, not to harm Hailey Bieber. They explained in an Instagram statement,