A budding trademark opposition battle over Kim Kardashian’s newly-launched skincare brand SKKN by Kim has resulted in a new lawsuit, pitting Kardashian (who is named as a defendant in her personal capacity in the complaint), her corporate entity Kimsaprincess Inc., and Coty, Inc. against a similarly-named company that claims the mega-star and her cosmetics manufacturing collaborator are on the hook for trademark infringement and unfair competition, as well as civil conspiracy under New York common law, for launching the “confusingly similar” SKKN by Kim brand and using the mark on goods and services that are “identical to, or highly related to, services offered by Beauty Concepts under [its own] SKKN+ trademark.”
In the complaint that it filed in a New York federal court on June 28, Brooklyn, New York-based Beauty Concepts – which does business as SKKN+ and describes itself as “a successful Black- and woman-owned business” – claims that almost a year ago, it learned that Kim Kardashian and Coty (the “defendants”) were planning to launch a new skincare line under the brand “SKKN and/or SKKN BY KIM.” Given that a “celebrity as prominent as Ms. Kardashian had chosen a brand highly confusingly similar to [its] own SKKN+ brand,” which Beauty Concepts says it began using in August 2018 on skin care products and services, Beauty Concepts claims that it was not only concerned that consumer confusion was likely but that it would “be quickly overshadowed by the Kardashian/Coty brand and would likely experience significant and irreparable brand damage as a result of this confusion.”
Against that background, Beauty Concepts alleges that through its counsel, it reached out to the defendants “to request that they abandon their plans to use a mark incorporating the most significant elements of Beauty Concepts’ mark SKKN+, namely the letters ‘SKKN.’” However, the defendants did not cease and desist, according to Beauty Concepts, and instead, they “willfully and deliberately chose to proceed with their plans to use the SKKN and SKKN BY KIM brand in total disregard of Beauty Concepts’ superior trademark rights,” prompting Beauty Concepts to initiate two opposition proceedings before the U.S. Patent and Trademark Office (“USPTO”)’s Trademark Trial and Appeal Board in December 2021 in an attempt to prevent four of the defendants’ applications for the SKKN BY KIM mark from being registered by the trademark office.
(In lieu of trademark registrations, Beauty Concepts asserts common law rights in the SKKN+ mark based on use in commerce beginning in at least August 2018. It filed a trademark application for registration for SKK+ for use on “skin care salon services care services; Beauty spa services; Skin care services; Beauty salon services” in March 2021, which is still pending before the USPTO. Counsel for Kardashian has pushed back against Beauty Concepts’ opposition arguments, asserting in a formal response in February that Beauty Concepts’ attempt to block Kardashian’s applications is based on “the misguided notion [that Beauty Concepts] owns exclusive trademark rights to the term ‘skkn’ for everything and anything beauty, cosmetic, hair, or nail-related.” Moreover, Kim K’s counsel asserts that to the extent that Beauty Concepts does have rights in the SKKN+ mark, those rights are “narrowly confined to skin facial services offered out of a single location in Brooklyn, New York.”)
Despite the currently pending trademark oppositions between the parties, Beauty Concepts asserts that on June 21, the defendants launched their new skin care line under the trademark SKKN BY KIM, and are “poised to earn hundreds of millions of dollars in revenue under the infringing SKKN marks.”
In addition to the likelihood that the defendants have already caused confusion, “misled, and deceived the general public and consumers into believing that Beauty Concepts manufactures, sells, sponsors, approves and/or licenses the defendants’ goods and services” as a result of the similarity of its brand name and goods/services, Beauty Concepts contends that Kim K and co. are “further adding to the likelihood of confusion and adverse impact on Beauty Concepts [by] repeatedly us[ing] and emphasiz[ing] SKKN in their packaging and marketing.” Notably, the plaintiff claims that “the logo for the SKKN BY KIM brand also heavily emphasizes the term ‘SKKN’ and de-emphases the words ‘by Kim,’” thereby, “amplifying the likelihood of confusion between the defendants’ SKKN brand and Beauty Concepts’ SKKN+ brand.”
Looking beyond the logo, Beauty Concepts points to the defendants’ already-heavily-followed social media accounts on platforms like Instagram, TikTok, and Twitter, which consist exclusively of the word @skkn without the “by Kim” element. Still yet, the plaintiff asserts that Kardashian and Coty “own and use the domain address www.skkn.com, which serves to redirect consumers to the domain www.skknbykim.com.”
The inevitable result of the entrance of SKKN by Kim into the market, per Beauty Concepts? Reverse confusion. “The defendants’ use of the infringing SKKN marks subjects Beauty Concept to reverse confusion with its SKKN+ marks by users expecting to acquire the defendants’ products bearing the infringing SKKN marks and/or services performed using such products from Beauty Concepts.” As such, Kim and Coty’s adoption of the allegedly infringing SKKN by Kim brand “has and will continued to impair the ability of Beauty Concepts’ customers and potential customers to search and find information about Beauty Concepts, its physical location, the SKKN+ Services, and the SKKN+ website and online marketing.”
Mirroring the claims made by fashion brand Rhode in the trademark lawsuit that it filed against Hailey Bieber earlier this month following her launch of a skincare brand under the same name, Beauty Concepts asserts that it is already feeling the damage to the SKKN+ brand in the wake of the launch – and “immediate success” – of SKK by Kim. For instance, Beauty Concepts claims that the defendants have already built up a sizable following on social media (i.e., more than 5 million followers on Instagram), thanks, in large part, to the “celebrity status of Ms. Kardashian,” and while it had previously “achieved a top ranking in an online search, which takes time, investment, and customer awareness for a small business to achieve,” the SKKN+ “online presence has been overwhelmed by the defendants’ online advertising.”
With the foregoing in mind, Beauty Concepts sets out claims of trademark infringement and unfair competition, reverse confusion, unlawful deceptive acts and business practices in violation of New York Gen. Bus. Law, as well as civil conspiracy under New York common law and unjust enrichment, and is seeking injunctive relief to bar the defendants from continuing to make use of the allegedly infringing SKKN by Kim branding, as well as monetary damages.
Counsel for Kardashian, Michael Rhodes, provided the following statement in response to Beauty Concepts’ complaint …
The case is Beauty Concepts LLC v. Kim Kardashian West, et al., 1:22-cv-03797 (EDNY).
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