Keeping Up With the Kardashian’s Trademark LawsuitOct 22, 2014 IP Legal Forum
Whether you love, hate, or are indifferent to the Kardashian franchise, the Kardashian sisters undeniably know how to market and brand themselves and their products. In December 2012, the Kardashian sisters hoped to Kardazzle its consumers with their new makeup line, Khroma Beauty. Here is an example of their Khroma Beauty advertisement.
Unfortunately, unlike King Midas, the Kardashian sisters did not turn Khroma Beauty into gold. Aside from dealing with less than stellar reviews, the Kardashian sisters received a cease and desist letter in June 2012 from By Lee Tillett, Inc., owner of the federal registration for the mark KROMA. Lee Tillett is a celebrity makeup artist and founder of Kroma, a cosmetics company based in Altamonte, Florida. Ms. Tillett choose the trademark KROMA, which means color in Greek, based on her Greek heritage and has used the trademark since March 2004. Here is a photo of Ms. Tillett with her Kroma cosmetics line.
In response to Ms. Tillett’s cease and desist letter, Boldface Licensing + Branding, which is the Kardashian’s licensing company, filed an action in a California federal court in December 2012 seeking declaration of its rights. Refusing to back down, Ms. Tillett filed a counterclaim in January 2013 seeking $10 million for trademark infringement. After months of legal battles, which included a preliminary injunction issued against the Kardashians, and then losing their appeal on the court’s decision to issue the injunction, the Kardashian sisters finally changed the name of their makeup line to Kardashian Beauty in May 2013. Here is an example of the new advertisement for Kardashian Beauty.
However, despite the name change, Ms. Tillett refused to dismiss the lawsuit, let alone dismiss the Kardashian sisters as defendants. Although the white flag in the form of name change generally spells the end of a trademark infringement lawsuit, it appeared that Ms. Tillett was determined to seek retribution especially given that Kroma’s sales dropped since the Kardashian sisters launched Khroma Beauty in the winter of 2012. Nevertheless, in April 2014, the light at the end of the tunnel appeared for the Kardashian sisters when the parties finally reached an undisclosed settlement agreement.
Lesson Learned: This headache could have been avoided if a trademark search was conducted. In general, trademark attorneys will conduct a trademark search via the internet, the United States Patent and Trademark Office database, and other comprehensive databases such as Thomson CompuMark to determine the availability of the mark when their clients begin the early stages of branding. This trademark search most likely would have identified Ms. Tillett’s KROMA mark, and a risk benefit analysis would have likely determined that Kardashian Beauty is a better and safer choice than Khroma Beauty.