Beauty Brands Rose, Inc., Pat McGrath Cosmetics Clash Over “Blush” Trademark
Two brands are fighting over the name of their products. The parties behind Rosie Huntington-Whitely’s clean cosmetics brand Rose, Inc. are fighting back against trademark litigation waged by Pat McGrath Cosmetics.
Amyris and Clean Beauty claim that they received a cease-and-desist letter from counsel for PMC, accusing Rose, Inc.’s “Blush Divine Radiant Cheek & Lip Color” of violating the copyrighted work of Pat McGrath. The marks have become associated exclusively with Pat McGrath in the cosmetics industry, and thus, demanded that the plaintiffs stop making, selling, and offering to sell any cosmetic under a Dynaformative mark.
Despite counsel for both sides engaging in several discussions in January, Amyris and Clean Beauty claim that they have been unable to work out their differences, prompting them to file suit and seek a declaration from the court.
Pat McGrath is a makeup artist.
The court is being asked to rule that the PMC does not own protectable rights to theDIVINE-formative family of marks.
The company does not have the necessary trademark rights for the name “DIVINE” and the alleged family of “DIVINE-formative” marks are necessary to wage viable infringement claims. The trademark “DIVINE” is a common term used in the cosmetics industry to describe hundreds and thousands of products, according to the lawsuit.
Amyris and Clean Beauty contend that the term is incapable of differentiating between blush and any other product in the cosmetics industry.
The use of the word “DIVINE” does not violate the protected rights of the company, as they are not using the word as a trademark, but as a descriptive term.
The bar for establishing rights in the “DIVINE” mark is argued to be too high, as well as the fact that the “Divine Rose, Divine Skin and Divine Blush” marks are not owned by PMC.
A family of marks typically requires many years of use before being recognized by the purchasing public as the common originator of goods within the family.
According to the lawsuit, PMC has promoted a false or misleading representation of facts about its ownership rights, and at the same time, has attempted to establish a nationwide monopoly in the word DIVINE. They argue that this casts doubt on whether members of the industry can continue to use the generic, highly descriptive or merely descriptive term to convey to customers the useful commercial speech and information about the nature of their products.
Rose, Inc. is a company
Amyris and Clean Beauty want the court to declare that PMC has engaged in unfair competition and trademark violations against them. In connection with the unfair competition claims, the plaintiffs are seeking injunctive relief to bar PMC from continuing its wrongful course of conduct, including asserting ownership in a protectable family of marks.
In terms of the likelihood of success, they may have a strong case for arguing that they should be protected from trademark liability for their use of the term “Divine” in connection with the Rose, Inc.’s blush Divine Radiant Cheek & Lip Color on the basis that they are not.
The case involving Hard Candy was similar to that of the Beverly Hills case. The Eleventh Circuit Court of Appeals determined that it had successfully made a descriptive fair use argument in connection with its use of “hard candy”, but that it had not used the term “hard candy” in a trademark sense.
A rep for the company didn’t respond to the request for comment.
The case is Amyris, Inc.
images: the fashion law
source: the fashion law