Kylie Jenner and her company Kylie Cosmetics are being sued … again. This time, the reality television star-turned-budding makeup mogul has been hit with an interesting trademark action, in which fellow beauty brand Sheree Cosmetics claims that Jenner has run afoul of the law by using its trademark-protected “Born To Sparkle” slogan for a single shade in a larger collection of liquid eyeshadow products and for allegedly copying the “inherently distinctive packaging [of Sheree Cosmetics’ products], by imprinting quotations on the [inside of] products’ packaging.”
According to the complaint, which was filed on Monday in a New York federal court, Alabama-based Sheree Cosmetics began using the “Born to Sparkle” slogan in connection with its various beauty products late last year, and filed a still-pending application to federally register the mark with the U.S. Patent and Trademark Office in August 2018.
Since then, Kylie Cosmetics has started “using the exact same trademark, BORN TO SPARKLE” on one product in her new line of liquid eyeshadow products, Sheree alleges, thereby “likely confusing consumers to believe they are buying the genuine, original BORN TO SPARKLE cosmetics from [Sheree Cosmetics]” instead of a product from Jenner’s wildly successful eponymous beauty venture.
More than merely jacking its trademark, Sheree’s further claims that Kylie Cosmetics has taken to including quotations on the inside of some of its eyeshadow palettes, which Sheree claims infringes its own “inherently distinctive packaging, including the imprinting of quotations in the products.” (Note: It seems unlikely that the inclusion of quotations on the inside of packaging would be protected).
In doing so, Sheree Cosmetics claims that Kylie Cosmetics is “deceptively trying to ‘pass off’ its products as those of [Sheree Cosmetics], or as somehow related to or associated with, or sponsored or endorsed by [Sheree Cosmetics], thereby exploiting [Sheree Cosmetics’], reputation in the marketplace.”
Feel free to question the validity of Sheree’s “passing off” argument, given that Jenner’s 3-year-old Kylie Cosmetics brand, which maintains a following of over 17 million on Instagram, alone, is one of the most well-known in the market and was recently estimated to be with more than $900 million, according to Forbes.
As for the legally-minded, it is worth considering – as University of New Hampshire Law trademark professor Alexandra J. Roberts points out: Does “Kylie's [use of the] ‘Born to Sparkle’ slogan as the name of one color in her collection of liquid eyeshadows actually amount to use as a trademark?” In other words, is Kylie Cosmetics using the “Born to Sparkle” slogan to serve as an indicator of the source of her eyeshadows in the same way as, say, Nike uses its swoosh mark to alert consumers about the brand of a pair of sneakers or how Chanel uses its name to identify for consumers that it is the maker of a certain bag or jacket?
It seems that instead of using the slogan as an indicator of source (i.e., as a trademark), Kylie’s use of the “Born to Sparkle” slogan might more realistically be an example of descriptive fair use. According to Roberts, “This is a little bit reminiscent of the ‘sealed with a kiss,’ case, [in which the Second Circuit held in 1997 that in connection with the marketing of two brands’ lipsticks] a phrase need not be super literal in describing the product to qualify for the fair use defense.”
With that in mind, this will likely not be an easy win (or a win at all) for Sheree.
* The case is Sheree Cosmetics LLC, v. Kylie Jenner, Kylie Cosmetics, et al., 1:18-cv-09673 (SDNY).