Kim Kardashian announced the launch of her anticipated skincare venture this month. Consisting of nine products in pared-back packaging (and in collaboration with Coty, which holds a 20 percent stake in Kim’s KKW Beauty), SKKN BY KIM is already courting controversy, with consumers likening the name of the new range to existing company SKN by Lori Harvey. But look beyond social media outrage over the similarities between the SKKN BY KIM and SKN by Lori Harvey monikers and you will see that a trademark scuffle over the SKKN BY KIM name is already under way – albeit with a different company, altogether, pitting Kardashian’s corporate entity, Kimsaprincess Inc., against Beauty Concepts LLC, a 4-year-old skincare company doing business as SKKN+.
The SKKN-centric clash got its start back in December 2021 when Brooklyn, New York-based Beauty Concepts initiated the first of two pending opposition proceedings with the U.S. Patent and Trademark Office (“USPTO”)’s Trademark Trial and Appeal Board (“TTAB”) in an attempt to block the registration of a handful of Kardashian’s trademark applications for “SKKN BY KIM.”
In the two since-consolidated oppositions that it filed with the TTAB in December 2021 and January 2022, respectively, Beauty Concepts argues that as a result of its continuous use of the SKKN+ mark in connection with “skin care salon services care services; beauty spa services; skin care services; beauty salon services” and the “substantial time and effort [that it has] devoted to advertising and promoting its services in connection with [that] mark,” it has developed a “valuable reputation and exceedingly valuable goodwill with respect to the SKKN+ mark.”
Against this background, Beauty Concepts argues in its oppositions that it is likely to be damaged by a handful of trademarks at the center of four intent-to-use trademark applications for “SKKN BY KIM” – namely for use on everything from hair dryers (Class 11) and bathmats (Class 27) to various types of garments (Class 25) and hair accessories (Class 26) – that Kardashian filed on March 30, 2021.
Specifically, Beauty Concepts asserts that Kardashian’s trademarks will be harmful because the SKKN BY KIM mark “is likely, when used on or in connection with the applied-for goods and services, to cause confusion or mistake with respect to the origin of the goods and services.” Moreover, given that its use of the SKKN+ mark in commerce predates Kardashian’s first use of the SKKN BY KIM mark, Beauty Concepts alleges that the registration of the SKKN BY KIM mark will impair its “prior, exclusive right to use [the] SKKN+ mark in connection with [its own] goods and services.” While Kardashian does not claim use in commerce in the various SKKN BY KIM applications (hence, the 1(b) filing basis), Beauty Concepts claims in the application that it filed on March 28, 2021 that it first began using the SKKN+ mark in commerce in August 2018.
Confusion is likely due to the similarity of the marks, themselves, Beauty Concepts argues, and also because its goods/services “are similar to, overlapping with, and/or identical to the goods in [Kardashian’s] applications” (and likely to be “offered in similar channels of trade and/or to identical customers”) – or at the very least, are part of the zone of natural expansion of Beauty Concepts’ services and goods. Seemingly looking to get ahead of potential pushback from counsel for Kardashian, Beauty Concepts claims in its opposition that the addition of “BY KIM” to the “SKKN” mark is unlikely to prevent confusion, as not only is the “BY KIM” wording descriptive (since the products to be sold under the mark will be associated with Kim Kardashian), but the wording “SKKN” in the mark is “the dominant portion.”
Counsel for Kardashian responded to the consolidated oppositions in February, asserting 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.” Even before it waged its opposition, Kardashian’s counsel claims that Beauty Concepts knew that the USPTO had preliminarily rejected its application for the SKKN+ mark. (Kardashian’s counsel is referring to a November 2021 Office Action issued in response to Beauty Concepts’ SKKN+ application, in which a USPTO examining attorney stated that in order for the SKKN+ mark to be eligible for registration, Beauty Concepts must disclaim the word “SKIN” because it is “merely descriptive of a characteristic or feature of [its] services.”)
More than that, Kardashian argued in response to the opposition that despite Beauty Concepts’ argument to the contrary, Kimsaprincess Inc. actually has a January 25, 2021 priority date for the “SKKN” trademark, which is “three months earlier than [Beauty Concepts’ March 28, 2021] trademark application filing date.” (Kardashian’s priority date is reflected in the application for registration for “SKKN” that Kimsaprincess Inc. filed with the USPTO on July 9, 2021 for use on various types of cosmetics and perfumes (in Class 3), and based on a foreign application that Kimsaprincess Inc. filed in January 2021.)
Finally, to the extent that Beauty Concepts has rights in the “SKKN” mark, counsel for Kardashian contends that those rights are “confined to the mark it is attempting to register with the USPTO, which includes stylization, a plus sign, and a logo – none of which appear in any of [Kimsaprincess Inc.’s] trademark filings—and only for its skin facial services.”
All in all, Kardashian’s counsel claims that Beauty Concepts’ opposition is an attempt by the company “to overstate its purported trademark rights and interfere with the registration of [Kardashian’s] marks across classes of goods and services for which there could be no likelihood of confusion with [its] business,” making it appropriate for the TTAB to deny the opposition with prejudice. In addition to the four trademark applications at issue in the opposition, an array of other applications for registration for “SKKN BY KIM” for use on things like “retail store services featuring skin, cosmetics, hair, nail and beauty products,” for instance, as well as Kardashian’s application for “SKKN,” have been suspended pending the outcome of the opposition and the resolution of the SKKN+ application.
As of now, the parties are clashing over the “failure to state a claim” affirmative defense that Kimsaprincess Inc. rose in its response to Beauty Concepts’ oppositions. (Counsel for Kardashian argued that Beauty Concepts’ opposition should be barred for failure to state a claim for which relief can be granted, namely, because Beauty Concepts “fails to allege sufficient facts, rather than conclusory or bare allegations, that establish its prior use in interstate commerce of its purported ‘SKKN+ & Design’ mark, including for goods and services that overlap with those in the challenged applications.” Beauty Concepts’ “allegations reference unspecific beauty and salon services provided only in Brooklyn New York, depict social media use that does not constitute use in commerce, and show beauty products identified not by [Beauty Concepts’] marks, but by marks belonging to others,” per Kardashian. “Without allegations sufficient to allege priority, [Beauty Concepts] has failed to state a claim which can afford the requested relief.”)
In a motion to strike dated March 7, 2022, Beauty Concepts argued that Kardashian’s “‘failure to state a claim’ assertion is unsupported and inappropriate as an affirmative defense statement.” Meanwhile, in a further response, counsel for Kardashian has since argued in response to that a few weeks later that it has “sufficiently plead an affirmative defense that provides [Beauty concepts] with fair notice of factual issues rendering its claim problematic, and [that Kardashian’s] affirmative defense provides sufficient notice of a plausible basis for the defense].”
The TTAB is still in the process of deciding on Beauty Concepts’ motion to strike and more fundamentally, the future of the various SKKN-centric trademark applications for registration, but that has not stopped Kardashian from preparing to launch her much-anticipated skincare venture later this month, presumably to no shortage of fan-fare.
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