Worth Beauty has filed suit against Michael Todd Beauty, accusing its fellow cosmetics company of copyright infringement and trade dress infringement, as well as unfair competition and false designation of origin. According to Worth Beauty’s suit, which was filed last week in the U.S. District Court for the Southern District of Texas, a federal court in Houston, Michael Todd Beauty is selling an infringing version of Worth’s blendSMART brush, “the first automatic motorized makeup brush, and the product represents a breakthrough in the beauty industry.”
According to Worth Beauty’s complaint, it “developed the blendSMART brush system, and now manufactures, markets, and sells, the blendSMART brush system internationally. Worth Beauty is the owner of all intellectual property rights relating to the blendSMART automated makeup brush system,” including a U.S. trademark registration (no. 4,842,589), which was issued in 2015. That mark merely covers the “BLENDSMART” name in connection with “Cosmetic applicators, namely, cosmetic brushes,” and not the actual brush invention, itself.
The company further asserts in its complaint that it “has acquired trademark rights in the inherently distinctive … product mark, and logo non-functional dimensions, shape, blendSMART product name, mark and logo, placement of the blendSMART product name, mark and logo on the brush handle, and the shape and size of the interchangeable heads.” Given that the company lacks federal trademark registrations for these elements, it is relying on common law trademark and trade dress claims here – making it something of less than slam-dunk case. (A federal trademark registration offers prima facie evidence of a registrant's exclusive right to use the mark or trade dress, after all).
In terms of copyright protection, Worth Beauty alleges that it filed applications to register the copyright for its power foundation tutorial, “BlendSMART Powder Application” in August 2016 and for its “BlendSMART How-To Liquid Foundation” tutorial on January 11, 2017, and that both applications are currently pending before the U.S. Copyright Office.
In terms of Michael Todd Beauty’s alleged wrongdoing, Worth Beauty claims that: “In Summer 2016, Worth Beauty became aware that Defendants were selling a confusingly similar automated makeup applicator under the name and trademark sonicBLEND. Defendants have been having been causing confusion in the market and trading off the goodwill of the blendSMART product. For example, Worth Beauty heard people say that they had seen its products on ABC’s The View television show, but it was the defendant’s brush that had been presented on The View, not Worth Beauty’s blendSMART brush.”
Worth Beauty goes on to state: “Customers, potential customers, and others were confused because the brushes were strikingly similar, if not virtually identical, and the defendant’s marketing and promotional materials are deceptively similar.”
And still yet, Worth Beauty claims that the defendant’s logo and trademark for its automated makeup brush, sonicBLEND, is confusingly and intentionally similar to Worth Beauty’s blendSMART logo and trademark for its automated makeup brush. Both logos and trademarks feature two words presented together (blendSMART and sonicBLEND) with the first word featuring small letters and the second word placed in all small capital letters in bold font (“SMART” and “BLEND”), and both trademarks prominently including the word “blend."
In terms of Worth Beauty’s copyrighted makeup tutorials, it states that Michael Todd Beauty – which settled a lawsuit with Clarisonic’s parent company in 2015 in connection with Michael Todd’s Soniclear antimicrobial sonic skin cleansing system – “copied not only the script for Worth Beauty’s product video, but also the complete look and feel of the video, including the video shots, sequencing, product placement, and graphics.”
With the foregoing in mind, Worth Beauty has asked the court to award it “maximum statutory damages in the amount of $150,000 per work infringed” or “actual damages and the profits [that the defendant earned from utilizing Worth Beauty’s intellectual property].” Interestingly, Worth Beauty has not explicitly sought out injunctive relief to prevent the defendants from continuing to market and sell the allegedly infringing goods.
Per WWD, Michael Todd Beauty declared Worth Beauty’s lawsuit has no merit. “Michael Todd Beauty takes great care to respect the valid intellectual property rights of others,” said Michael Friend, senior vice president of sales at the brand. He suggested Worth Beauty is looking to push out a rival. “Plaintiff [Worth Beauty] seeks to respond to this new competition with a lawsuit rather than simply compete and let the marketplace decide which product is the better offering,” said Michael Friend, Michael Todd's senior vice president of sales. The company plans to file a countersuit.