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Image: Rhode-NYC

Hailey Bieber’s beauty brand has responded to the trademark suit waged against it by Rhode-NYC, LLC (“Rhode-NYC”), which has claimed that by adopting a similarly-named brand – Rhode – for her own brand, Bieber is “swamping [Rhode-NYC’s] market presence,” confusing consumers, and thus, engaging in trademark infringement. In response to the trademark suit that Rhode-NYC filed with a New York federal court in June, Bieber’s Rhode brand has denied the bulk of Rhode-NYC’s claims and set out claims of its own in an attempt to get Rhode-NYC’s trademark registrations cancelled. 

Setting the stage for the counterclaims that it makes in its September 12 filing, Rhode asserts that Rhode-NYC “first began to sell clothing and for several years thereafter … sold such clothing under the trademark RHODE RESORT – not the trademark RHODE.” During this time, “which lasted until in or around March of 2019,” Rhode alleges that the “labels on [Rhode-NYC’s] clothing read ‘Rhode Resort,’” and for “most or all of this period, its website was at rhoderesort.com, and the name of the brand on the homepage of the website was ‘Rhode Resort.’” 

At the same time, Rhode asserts that Rhode-NYC filed a trademark application for RHODE RESORT for use on clothing in June 2013, and in March 2014, alerted the U.S. Patent and Trademark Office (“USPTO”) that it had started using the RHODE RESORT mark in commerce in connection with apparel, providing the trademark office with specimens of such use that showed the RHODE RESORT mark used on a clothing box and on a clothing tag. “It was not until at least five years later,” Rode argues, that Rhode-NYC “dropped the RESORT from RHODE RESORT and adopted the mark RHODE.” 

Rhode also notes that “despite the fact that it would be a couple of years before [it] would use the mark RHODE for its clothing (rather than RHODE RESORT),” Rhode-NYC filed an 1(a) application with the USPTO to register the mark RHODE for “a variety of clothing items in Class 25” in March 2017, declaring that the RHODE made was “in use in commerce on or in connection with the goods/services in the application.” The problem, according to Rhode, is that at the time that Rhode-NYC filed this application – which was ultimately registered by the USPTO in September 2017 – “it was not offering any clothing under the RHODE mark.” (Indeed, Rhode states that the specimen of use that Rhode-NYC submitted in support of the application showed that the mark actually in use was RHODE RESORT.)

One of Rhode's trademark applications

Further bolstering its argument that Rhode-NYC had not been using the mark on its own without “Resort,” Rhode points to an April 2019 interview in which Rhode-NYC’s founders announced that they had changed the name of the brand from RHODE RESORT to RHODE. With this in mind, Rhode claims that Rhode-NYC “had not used RHODE as a trademark in commerce for clothing before [its] March 2019 ‘rebrand,’ and in particular had not used it as of the filing date of its 2017 use-based RHODE application.” 

Fast forward to December 31, 2020, and Rhode-NYC filed two additional trademark applications with the USPTO for the RHODE mark that cover “a wide variety of goods” – from throw blankes and candles to enamelware plates and sunglasses – in furtherance of what appears to be Rhode-NYC’s “attempt to claim a much broader scope of rights under [its] RHODE mark than it had previously,” Rhode contends. One of those applications is still pending before the trademark office and the other (Reg. No. 6,539,188) was registered, and is at the heart of Rhode-NYC’s suit against Rhode. 

Rhode-NYC filed these applications “after becoming aware of Rhode Skin’s developing plans to use the RHODE mark” and after it had filed two applications for registration of its own for use of the Rhode mark on cosmetics/skincare in February and December 2020. Even before that, though, Rhode claims that in late 2018, its counsel “reached out to [Rhode-NYC] and, among other things, questioned [Rhode-NYC’s] need for a registration for RHODE, a mark it apparently was not using.” (Rhode-NYC did not take issue either of those marks during the opposition period, Rhode states.)

And “in its rush to rapidly expand its rights in the RHODE mark,” Rhode claims that Rhode-NYC filed the application that ultimately matured to Reg. No. 6,539,188 on an “in-use” basis even though it “had not used the RHODE mark in commerce … as required to support a use-based application, as of the application filing date in connection with all applied-for goods.” While Rhode-NYC was making use of the Rhode mark for some of the goods listed in its application, Rhode claims that for “several” other goods listed, “there is no evidence of any sales ever.”

With the foregoing in mind, Rhode asserts that Hailey Bieber’s beauty brand has responded to the trademark suit waged against it by Rhode-NYC, LLC (“Rhode-NYC”), which has claimed that by adopting a similarly-named brand – Rhode – for her own brandregistration – no. 5,286,239, which covers RHODE for use on various clothing items – should be canceled in its entirety, as Rhode-NYC has “not made bona fide use of the RHODE mark in U.S. commerce.” To the extent that Rhode-NYC “shipped or sold any such goods in commerce as of [the application filing date in March 2017],” its use of the mark was limited to “RHODE RESORT in connection with such goods—not the mark RHODE.” Beyond that, Rhode claims that Rhode-NYC registration no. 6,539,188 – which extends to RHODE for use on clothing (Class 25); throw blankets, towels, etc. (Class 24); hair accessories; and plush dolls, puzzles, etc. (Class 28) – should be cancelled for the goods listed in Classes 24 and 28, as well as some in Class 25, as the company is not actually using the mark in connection with those goods. 

In its complaint in June, Rhode-NYC claims that model-slash-budding beauty entrepreneur Hailey Bieber launched a skincare brand of the same name, arguing that “there is no doubt that Ms. Bieber and her companies know of [its] superior rights,” as they “previously sought to acquire the RHODE mark, appreciating that the brands could not coexist without confusion.” Specifically, Rhode-NYC has argued that in November 2018, “counsel for Ms. Bieber contacted counsel for Rhode … and offered to buy Rhode’s trademark registration,” having “clearly recogniz[ed] Rhode’s prior rights to the use of RHODE.” 

The case is Rhode-NYC, LLC v. Rhodedeodato Corp. et al1:22-cv-05185 (SDNY).