Kim Kardashian has been sued by New York-based Beauty Concepts LLC over Kardashian’s recently launched skincare line, “SKKN by Kim.” Beauty Concepts filed a complaint in the Eastern District of New York against Kardashian, her business entity Kimsaprincess Inc., and beauty company Coty Inc. on Tuesday, alleging that SKKN by Kim uses a trademark “very confusingly similar” to her own skincare line. Beauty Concepts, “SKKN+”. The complaint further alleges that Beauty Concepts has priority of use over the letters “skkn” due to the company’s consistent use of the “SKKN+” trademark since at least August 2018.
The Beauty Concepts lawsuit is just the latest challenge facing Kardashian’s skincare line. Kardashian filed 17 trademark applications for “SKKN by Kim” between March and July 2021. On March 28, 2021, two days before Kardashian filed her first “SKKN by Kim” applications, Beauty Concepts filed its own trademark application for “SKKN+”, and in September 2021, model Lori Harvey also filed a trademark application for a similar name – “SKN by LH”.
Kardashian’s trademark applications are still pending review by the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office (“USPTO”). In December 2021 and January 2022, Beauty Concepts initiated two opposition proceedings against several Kardashian candidacies. The TTAB is now mediating negotiations between the two brands, and review of all of Kardashian’s pending brands is on hold until the matter is resolved.
According to Beauty Concepts, Kardashian was made aware of the potential for trademark confusion when Beauty Concepts filed oppositions to Kardashian’s trademarks and sent a cease and desist letter to Kardashian’s team. Despite her formal notice, Kardashian proceeded with Kim’s launch of SKKN in June of this year.
Beauty Concepts argued to TTAB that it has exclusive rights to “skkn” due to its use of the mark since at least 2018. According to the opposition filed with the TTAB, Kardashian’s use of the term “skkn” is likely to create confusion or error as to the origin of the parties’ goods and services. The resulting confusion will likely infringe Beauty Concepts’ prior and exclusive right to the trademark.
In their answer to Beauty Concepts’ objection, Kardashian’s attorneys made several arguments: (1) Beauty Concepts does not have exclusive rights to the term “skkn” due to the descriptive nature of the mark, which is only ‘a misspelling of the term “skin”; (2) Beauty Concepts’ rights to the term “skkn” are, at best, limited to the trademark it seeks to register with the USPTO, which includes stylization, plus sign, and logo; and (3) Beauty Concepts’ prior use of the mark does not cover “anything and everything relating to beauty, cosmetics, hair, or nails.” Rather, its rights to “skkn” (if any) are narrowly limited to facial care services offered from a single location in Brooklyn, New York.
The outcome of the mediation between Kardashian and Beauty Concepts will likely affect other pending trademark applications covering variations of the word “skin.” Generally, the TTAB will reject a trademark application for a highly descriptive mark, such as one that simply describes skin care products and services. However, if an applicant can demonstrate that the descriptive mark is associated with a distinct product – for example, adding “by Kim” – the TTAB may be more likely to grant approval.
Beauty Concepts makes similar arguments in its lawsuit against Kardashian, alleging that Kardashian willfully ignored Beauty Concepts’ superior rights to the “skkn” mark, and that Kardashian’s use of the mark “will and will have confused, misled and misled the general public and consumers into believing that Beauty Concepts manufactures, sells, sponsors, endorses and/or licenses the goods and services of the Kardashian/Coty Defendants,” which is detrimental to Beauty Concepts’ SKKN+ trademark. sues for willful infringement of Beauty Concepts trademarks, reverse confusion, unfair competition and civil conspiracy.
If Kardashian loses the TTAB dispute, she won’t be able to get a trademark for “SKKN by Kim,” but can continue to use the trademark in her branding. However, if Kardashian loses the lawsuit, she could be forced to stop using the mark altogether. Beauty Concepts seeks both injunctive relief and damages in its complaint. If the court grants Beauty Concepts the relief it seeks, SKKN by Kim will be forced to stop sales until it stops using the letters “skkn.”
The TTAB has yet to issue its decision in the dispute between Kardashian and Beauty Concepts, and it’s unclear whether or not its decision will affect the outcome of the lawsuit. According to the 2015 Supreme Court decision in B&B Hardware, Inc. v. Hargis Industries, Inc.however, if the “uses judged by the TTAB are materially the same as those [the] district court”, the foreclosure may apply so that the district court will be bound by the decision of the TTAB.