An ongoing trademark cancellation battle between two beauty brands with the same name has spilled over into the courts. In the declaratory judgment lawsuit it filed in federal court in Illinois on Jan. 29, Rare Beauty, the brand founded by singer-slash-actress-slash-mental health attorney Selena Gomez, claims that an independent brand named RareBeauty Cosmetics is seeking to revoke just one of its existing trademark registrations through proceedings before the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office , but also demands a $10 million sum in order to avoid ending up on the recipient side of a trademark infringement suit.
According to the newly filed lawsuit, Rare Beauty claims that since at least 2016, when it “first conceived and prepared the use of the RARE BEAUTY mark in connection with cosmetics and related products”, and more recently, officially launching the brand in early 2020, she “has invested significant time, money and effort to develop, secure, promote and advertise cosmetics, beauty tools, apparel, accessories and of related products and services under the RARE BEAUTY brand,” which enabled consumers to “easily identify[ing] the RARE BEAUTY brand as […] the source of Rare Beauty’s goods and services.
Following on from its selection of the Rare Beauty name several years ago, the Southern California-based brand says it “drives[ed] a trademark clearance search for the RARE BEAUTY brand” in March 2017, and that the search “did not reveal any prior trademark registrations or uses of RARE BEAUTY in connection with cosmetics”. In anticipation of the brand’s launch , Rare Beauty states that it filed for trademark registration with the United States Patent and Trademark Office (“USPTO”) in late 2017 for “RARE BEAUTY” for use on cosmetics and related retail services, which was not challenged by any third party when it was published by the USPTO and was finally registered in December 2020.
Fast forward to September 2021, and Rare Beauty alleges that despite having “almost four years of real and constructive knowledge of Rare Beauty and the RARE BEAUTY brand”, independent entity RareBeauty Cosmetics and its founder KeSheena Heard filed a petition with the TTAB, seeking to revoke RARE BEAUTY’s registration, and at the same time also “threatened to sue Rare Beauty for alleged trademark infringement” unless the brand pays a sum of $10 million.
The basis of the Atlanta-based RareBeauty Cosmetics cancellation petition? In addition to asserting that it takes precedence over Gomez’s Rare Beauty mark with respect to the “RAREBEAUTY” mark because it has made “common law use” of the mark in the United States under her sale of beauty products “before [Rare Beauty’s] USPTO filing date,” RareBeauty Cosmetics also claims that Rare Beauty’s registration should be revoked because the RARE BEAUTY trademark infringes – and dilutes – its RAREBEAUTY trademark. (RareBeauty Cosmetics also claims that Rare Beauty committed fraud with the USPTO when it filed its application for registration because it allegedly had no good faith intention to use the trademark, which Rare Beauty denies in her complaint.)
Pushing back against RareBeauty Cosmetics’ claims, Rare Beauty argues in the declaratory judgment complaint that it is in fact the prior party with respect to the RARE BEAUTY mark, that it is “not aware of any instances of confusion among consumers” to date, and that it “does not compete directly with RareBeauty Cosmetics’ offerings” (as the two companies “target separate and distinct consumers through different marketing channels”. Rare Beauty stocks its products on its own e-commerce site, and it is also offered by Sephora and Space NK (in the UK), while RareBeauty Cosmetics sells exclusively on its own e-commerce site.
Rare Beauty also asserts that RareBeauty Cosmetics has not suffered any harm from Rare Beauty’s “years of coexisting use of the RARE BEAUTY mark in connection with the parties’ respective products and services.”
Although Rare Beauty claims to have tried to settle the confrontation amicably, in particular by “offering[ing] to compensate [RareBeauty Cosmetics] for the value of its existing business and brand inventory and to help [the company] in launching a business under a new brand”, such discussions between the parties “did not resolve the dispute”.
In light of RareBeauty Cosmetics’ alleged demands that Rare Beauty pay it $10 million to avoid litigation, which it has not paid, Rare Beauty states that it “has a reasonable apprehension of litigation ” and therefore asks for a statement from the court to cancel the situation. Namely, Rare Beauty asks the court to determine that “there is no risk of confusion between, on the one hand, the RARE BEAUTY trademark of Rare Beauty and, on the other hand, all rights [RareBeauty Cosmetics] could own; and therefore, that the RARE BEAUTY trademark of Rare Beauty does not infringe any rights held by [RareBeauty Cosmetics].” Rare Beauty is also requesting a statement confirming the validity of its RARE BEAUTY trademark registration.
The Rare Beauty lawsuit comes as the number of celebrity-founded beauty brands (from Rihanna and Lady Gaga to Jennifer Lopez to the various billion-dollar Kardashian/Jenner ventures) has skyrocketed in recent years. and in many cases, with stunning success. , as famous faces seek to stake the global beauty industry and its valuation of more than $500 billion.
Regarding the success of Rare Beauty since its launch in February 2020, which consisted of a rollout of “14 categories and 150 SKUs, including lipsticks, liquid blush, eyeliner, eyebrow pencils, a diverse range of foundation and concealer shades, and other related products,” all sold in line with the company’s mission of “supporting mental wellness,” Rare Beauty states in her complaint that she “has been hugely successful, generating millions in retail sales and attracting over 2.9 million followers on Instagram.”
A representative for RareBeauty Cosmetics did not respond to a request for comment.
The case is Rare Beauty, LLC v. RareBeauty Cosmetics LLC, 1:22-cv-00533 (ND Ill.)
An ongoing trademark cancellation battle between two beauty brands with the same name has spilled over into the courts. In the declaratory judgment lawsuit it filed in federal court in Illinois on Jan. 29, Rare Beauty, the brand founded by singer-slash-actress-slash-mental health attorney Selena Gomez, claims that an independent brand named RareBeauty Cosmetics is seeking to revoke just one of its existing trademark registrations through proceedings before the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office , but also demands a $10 million sum in order to avoid ending up on the recipient side of a trademark infringement suit.
According to the newly filed lawsuit, Rare Beauty claims that since at least 2016, when it “first conceived and prepared the use of the RARE BEAUTY mark in connection with cosmetics and related products”, and more recently, officially launching the brand in early 2020, she “has invested significant time, money and effort to develop, secure, promote and advertise cosmetics, beauty tools, apparel, accessories and of related products and services under the RARE BEAUTY brand,” which enabled consumers to “easily identify[ing] the RARE BEAUTY brand as […] the source of Rare Beauty’s goods and services.
Following on from its selection of the Rare Beauty name several years ago, the Southern California-based brand says it “drives[ed] a trademark clearance search for the RARE BEAUTY brand” in March 2017, and that the search “did not reveal any prior trademark registrations or uses of RARE BEAUTY in connection with cosmetics”. In anticipation of the brand’s launch , Rare Beauty states that it filed for trademark registration with the United States Patent and Trademark Office (“USPTO”) in late 2017 for “RARE BEAUTY” for use on cosmetics and related retail services, which was not challenged by any third party when it was published by the USPTO and was finally registered in December 2020.
Fast forward to September 2021, and Rare Beauty alleges that despite having “almost four years of real and constructive knowledge of Rare Beauty and the RARE BEAUTY brand”, independent entity RareBeauty Cosmetics and its founder KeSheena Heard filed a petition with the TTAB, seeking to revoke RARE BEAUTY’s registration, and at the same time also “threatened to sue Rare Beauty for alleged trademark infringement” unless the brand pays a sum of $10 million.
The basis of the Atlanta-based RareBeauty Cosmetics cancellation petition? In addition to asserting that it takes precedence over Gomez’s Rare Beauty mark with respect to the “RAREBEAUTY” mark because it has made “common law use” of the mark in the United States under her sale of beauty products “before [Rare Beauty’s] USPTO filing date,” RareBeauty Cosmetics also claims that Rare Beauty’s registration should be revoked because the RARE BEAUTY trademark infringes – and dilutes – its RAREBEAUTY trademark. (RareBeauty Cosmetics also claims that Rare Beauty committed fraud with the USPTO when it filed its application for registration because it allegedly had no good faith intention to use the trademark, which Rare Beauty denies in her complaint.)
Pushing back against RareBeauty Cosmetics’ claims, Rare Beauty argues in the declaratory judgment complaint that it is in fact the prior party with respect to the RARE BEAUTY mark, that it is “not aware of any instances of confusion among consumers” to date, and that it “does not compete directly with RareBeauty Cosmetics’ offerings” (as the two companies “target separate and distinct consumers through different marketing channels”. Rare Beauty stocks its products on its own e-commerce site, and it is also offered by Sephora and Space NK (in the UK), while RareBeauty Cosmetics sells exclusively on its own e-commerce site.
Rare Beauty also asserts that RareBeauty Cosmetics has not suffered any harm from Rare Beauty’s “years of coexisting use of the RARE BEAUTY mark in connection with the parties’ respective products and services.”
Although Rare Beauty claims to have tried to settle the confrontation amicably, in particular by “offering[ing] to compensate [RareBeauty Cosmetics] for the value of its existing business and brand inventory and to help [the company] in launching a business under a new brand”, such discussions between the parties “did not resolve the dispute”.
In light of RareBeauty Cosmetics’ alleged demands that Rare Beauty pay it $10 million to avoid litigation, which it has not paid, Rare Beauty states that it “has a reasonable apprehension of litigation ” and therefore asks for a statement from the court to cancel the situation. Namely, Rare Beauty asks the court to determine that “there is no risk of confusion between, on the one hand, the RARE BEAUTY trademark of Rare Beauty and, on the other hand, all rights [RareBeauty Cosmetics] could own; and therefore, that the RARE BEAUTY trademark of Rare Beauty does not infringe any rights held by [RareBeauty Cosmetics].” Rare Beauty is also requesting a statement confirming the validity of its RARE BEAUTY trademark registration.
The Rare Beauty lawsuit comes as the number of celebrity-founded beauty brands (from Rihanna and Lady Gaga to Jennifer Lopez to the various billion-dollar Kardashian/Jenner ventures) has skyrocketed in recent years. and in many cases, with stunning success. , as famous faces seek to stake the global beauty industry and its valuation of more than $500 billion.
Regarding the success of Rare Beauty since its launch in February 2020, which consisted of a rollout of “14 categories and 150 SKUs, including lipsticks, liquid blush, eyeliner, eyebrow pencils, a diverse range of foundation and concealer shades, and other related products,” all sold in line with the company’s mission of “supporting mental wellness,” Rare Beauty states in her complaint that she “has been hugely successful, generating millions in retail sales and attracting over 2.9 million followers on Instagram.”
A representative for RareBeauty Cosmetics did not respond to a request for comment.
The case is Rare Beauty, LLC v. RareBeauty Cosmetics LLC, 1:22-cv-00533 (ND Ill.)