An ongoing trademark cancellation battle between two similarly-named beauty brands has spilled over into court. In the declaratory judgment lawsuit that it filed in federal court in Illinois on January 29, Rare Beauty, the brand founded by singer-slash-actress-slash-mental health advocate Selena Gomez, claims that an unrelated brand named RareBeauty Cosmetics is looking to not only cancel one of its existing trademark registrations by way of a proceeding before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB”) but is also demanding a sum of $10 million in order to avoid ending up on the receiving end of a trademark infringement suit.
According to the newly-filed lawsuit, Rare Beauty asserts that since at least as early as 2016, when it “first conceived and prepared to commence use of the mark RARE BEAUTY in connection with cosmetics and related products,” and more recently, in formally launching the brand in early 2020, it “has invested a substantial amount of time, money, and effort to develop, secure, promote, and advertise cosmetics, beauty tools, clothing, accessories, and related products and services under the trademark RARE BEAUTY,” which has resulted in consumers readily “identify[ing] the RARE BEAUTY trademark as […] the source of Rare Beauty’s goods and services.”
In furtherance of its selection of the Rare Beauty name several years ago, the Southern California-based brand claims that it “conduct[ed] a trademark clearance search for the mark RARE BEAUTY” in March 2017, and that the search “disclosed no prior trademark registrations or uses of RARE BEAUTY in connection with cosmetics.” In anticipation of the launch of the brand, Rare Beauty states that it filed a trademark application for registration with the U.S. Patent and Trademark Office (“USPTO”) in late 2017 for “RARE BEAUTY” for use on cosmetics and related retail services, which was not opposed by any third parties when it was published by the USPTO, and ultimately, was registered in December 2020.
Fast forward to September 2021, and Rare Beauty alleges that despite having “nearly four years of actual and constructive knowledge of Rare Beauty and the RARE BEAUTY trademark,” unrelated entity RareBeauty Cosmetics and its founder KeSheena Heard filed a petition with the TTAB, seeking to cancel the RARE BEAUTY registration, and at the same time, have also “threatened to sue Rare Beauty for alleged trademark infringement” unless the brand pays up a sum of $10 million.
The basis for Atlanta-based RareBeauty Cosmetics’ cancellation petition? In addition to claiming that it has priority over Gomez’s Rare Beauty brand when it comes to the “RAREBEAUTY” mark because it made “common law use” of the mark in the U.S. in connection with its sale of beauty products “prior to [Rare Beauty’s] filling date at the USPTO,” RareBeauty Cosmetics also asserts that Rare Beauty’s registration should be cancelled because the RARE BEAUTY trademark is infringing – and diluting – its RAREBEAUTY mark. (RareBeauty Cosmetics also claims that Rare Beauty committed fraud on the USPTO when it filed its application for registration, as it allegedly lacked a bona fide intent to use the mark, which Rare Beauty denies in its complaint.)
Pushing back against RareBeauty Cosmetics’ claims, Rare Beauty argues in the declaratory judgment complaint that it is actually the party with priority when it comes to the RARE BEAUTY mark, that it is “not aware of any instances of consumer confusion” to date, and that it “does not directly compete with RareBeauty Cosmetics’ offerings” (as the two companies “target separate and distinct consumers through different marketing channels.” Rare Beauty stocks its products on its own e-commerce site, and it also carried by Sephora and Space NK (in the United Kingdom), whereas RareBeauty Cosmetics sells exclusively on its own e-commerce site.
Rare Beauty also asserts that that RareBeauty Cosmetics has not suffered any harm as a result of “Rare Beauty’s years of coexisting use of the RARE BEAUTY mark in connection with the parties’ respective goods and services.”
While Rare Beauty contends that it has attempted to settle the clash out of court, including by “offer[ing] to compensate [RareBeauty Cosmetics] for the value of its business and existing branded inventory and to assist [the company] in launching a business under a new brand,” such discussions between the parties “did not resolve the dispute.”
In light of RareBeauty Cosmetics’ alleged demands that Rare Beauty pay it a sum of $10 million to avoid litigation, which it has not paid, Rare Beauty says that it “has a reasonable apprehension of litigation,” and thus, is seeking a declaration from the court to nullify the situation. Namely, Rare Beauty is look for the court to determine that “there is no likelihood of confusion between, on the one hand, Rare Beauty’s RARE BEAUTY mark and, on the other, whatever rights [RareBeauty Cosmetics] might own; and therefore, that Rare Beauty’s RARE BEAUTY mark does not infringe any rights owned by [RareBeauty Cosmetics].” Rare Beauty is also seeking a declaration affirming the validity of its RARE BEAUTY trademark registration.
The Rare Beauty lawsuit comes as the number of celebrity-founded beauty brands (from Rihanna and Lady Gaga to Jennifer Lopez to the various billion-dollar Kardashian/Jenner ventures) has skyrocketed in recent years, and in no shortage of cases, with striking success, as famous faces look to bank on the global beauty industry and its $500 billion-plus valuation.
In terms of the success of Rare Beauty since its launch in February 2020, which consisted of a roll out of “14 categories and 150 SKUs, including lipsticks, liquid blush, eyeliner, brow pencils, a diverse range of foundation and concealer shades, and other related products,” all sold in line with the company’s mission to “support mental well-being,” Rare Beauty states in its complaint that it “has enjoyed enormous success, generating millions in retail sales and attracting more than 2.9 million followers on Instagram.”
A rep for RareBeauty Cosmetics did not respond to a request for comment.
The case is Rare Beauty, LLC v. RareBeauty Cosmetics LLC, 1:22-cv-00533 (N.D. Ill.)