Hailey Baldwin Bieber's RHODE sued for Trademark Infringement
The importance of trademark registration and enforcement becomes ever apparent when celebrities and public figures find themselves facing trademark infringement lawsuits. A short week after the launch of Hailey Baldwin Bieber’s skincare brand RHODE in June 2022, a Los Angeles-based fashion brand with the same name filed a lawsuit against Bieber’s brand.
The Dispute
The LA-based company Rhode-NYC, LLC filed the lawsuit with the U.S. District Court in the Southern District of New York, seeking injunctive relief with damages and attorneys’ fees, for the alleged unauthorized and infringing misappropriation of its distinctive RHODE trademark.
The founders of the company, Purna Khatau and Phoebe Vickers, started their company in 2014 selling clothing and accessories. Their story is like that of many young entrepreneurs, they quit their jobs to invest time into building a company from scratch. The fashion brand saw sales success and continued to grow. In the complaint, they write “The company’s female founders have entrenched RHODE as a distinct and recognizable brand with an intuitive take on dressing that provides Rhode’s customers with vibrant clothing and accessories to punctuate their lives.”
Rhode-NYC’s legal team claims that Bieber attempted to acquire the trademark from them in 2018 unsuccessfully. When Rhode-NYC refused to sell the trademark, Bieber launched her skincare brand under the same name in 2022 anyway. In the company, Rhode-NYC alleges, “Defendants—the global celebrity Hailey Bieber and her corporations—threaten to wash away what Khatau and Vickers have built in an instant. Last week they launched a beauty brand with the identical name ‘rhode.’”
The fashion brand explained that both fashion and cosmetics often overlap in the marketplace and collaborate. Rhode-NYC alleged, “Defendants’ conduct is as plainly unlawful as it is unprincipled. By appropriating another’s mark in an overlapping product market, Defendants violate both the Lanham Act and New York state law, threatening mass confusion of the sort the trademark law exists to prevent.” Rhode-NYC states that it has no choice but to avail itself of all possible relief under the law in order to avoid being squashed under the immense weight of the latest venture of an internet celebrity. Lisa T Simpson the attorney of record for the Fashion company terms it “a textbook case of reverse confusion, in which a massive junior trademark user threatens to trample a smaller senior user’s market.” The court has not yet to issue a decision.
Importance of Trademark Registration
It’s important to note, however, that Bieber was able to secure a RHODE trademark under the category of cosmetics. The scope of trademark protection at USPTO is limited to the class of goods and services covered by the mark.
It is not news for celebrity brands to be accused of using their social influence to harm minority businesses. Kim Kardashian was recently served a cease-and-desist letter with similar allegations for her new SKKN brand. Such cases emphasize the need for small companies to acquire trademark rights in their branding and to actively enforce them–neither is a do-it-yourself job.
If you are developing a clothing or cosmetic brand, it’s important to work with a lawyer to secure and maintain your intellectual property. If you are ready to take your branding to the next level, contact the Antares Law Firm today.
— Laila Ghauri, Esq., Trademark Lawyer, Antares Law Firm
