Either Kim Kardashian and company didn’t bother with a proper trademark search, didn’t listen to their trademark attorney, or received some bad advice. Last week Kardashian was hit with a $10 million trademark infringement lawsuit and the complaint does not appear frivolous. Lee Tillett Inc. owns a Florida-based cosmetics brand called Kroma. Kardashian’s makeup is called “Khroma.” See any similarities?
One would think a good trademark attorney would have advised Kardashian to have a comprehensive trademark search conducted before launching a new product. One would also think her trademark attorney would have advised her of the risks involved in naming her new cosmetic product Khroma when there is already a cosmetic brand on the market called Kroma. Of course, that is assuming that Kardashian listens to her attorney’s advice.
Boldface Licensing + Branding is the company that manages Kardashian’s line of Beauty products. One wonders if Boldface, as an apparently experienced branding company, thought to have a trademark search conducted. If they lacked experience before, Boldface should feel a little more experienced now and maybe a little red-faced, as this is not the first legal threat received over this issue. In October of last year, Los Angeles-based company “Chroma Beauty” threatened legal action against the Kardashians for the same Khroma line. It must have been resolved, however, because no complaint was ever filed.
But Boldface Licensing may have beaten Lee Tillett’s “Kroma” to the punch. Tillett sent a cease and desist letter last summer, which Boldface apparently ignored. Or did they? In early December 2012, Boldface’s trademark attorneys filed a Declaratory Judgment action against Kroma, in anticipation of future trademark lawsuit troubles. But troubles came nonetheless. Lee Tillett said in a press statement that “I developed the Kroma line myself, built my business through my own hard work, and took the legal steps necessary to protect it, and yet I have now been forced into legal battle with the Kardashians.” While Chroma dropped its accusations early on, Lee Tillett seems prepared to go the distance.
The effect of Kardashian filing a declaratory judgment action in December will at best affect the location of the trademark infringement lawsuit, although this could impact legal costs for Tillett. Either way, it seems that Kardashian must not be too concerned about accumulating legal fees for trademark attorneys. It is yet to be seen how much bang for her legal buck she will get, as the courts have yet to decide the case.
With Chroma and Kroma already on the market, it seems strange that Kardashian and Boldface Licensing would insist on Khroma as their makeup name of choice. A good preliminary trademark search should have turned up these marks. A trademark search is typically done to determine if there is a risk that a desired mark would create “a likelihood of confusion,” or in other words if the desired mark would create a likelihood that a consumer would confuse the source of goods associated with the desired mark with the source of goods sold under a different mark. This can happen even if the desired mark has a different spelling from the third party’s trademark.
Although, in the Kardashians’ defense, the actual trademarks filed with the USPTO are “Khroma Beauty By Kourtney Kim And Khloe” and “Kardashian Khroma”. So at least it’s not Khroma by itself. Moreover, according to Boldface Licensing, the prices, trade dress and points of sale will all be very different than Lee Tillett’s products, which are much higher-end. Regardless, one would think Kardashian would have had the foresight to know this would likely happen.