Kim Kardashian’s SKKN by KIM is no longer at the center of a trademark infringement lawsuit waged against it by a smaller company that accused the mega-star of 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 under [its own] SKKN+ trademark.” In a notice lodged with the U.S. District Court for the Eastern District of New York on Tuesday, Beauty Concepts LLC d/b/a/ SKKN+ alerted the court that it was voluntarily dismissing the trademark infringement, unfair competition, and civil conspiracy claims that it lodged against the defendants – including Kim Kardashian and partner Coty, Inc. – without prejudice.
In its June 2022 complaint, Beauty Concepts alleged that despite operating in the skincare space since August 2018 under the name SKKN+, Kardashian launched her similarly-named SKKN by KIM venture two years later, and in the process, threatened to “quickly overshadow” the smaller company and confuse consumers. Kardashian 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,” the plaintiff argued.
The terms of the parties’ apparent resolution have not been disclosed, but they appear to include Beauty Concepts winding down of the opposition proceedings that it initiated with the U.S. Patent and Trademark Office (“USPTO”)’s Trademark Trial and Appeal Board (“TTAB”), and abandoning the applications it filed for its own SKKN+ mark. In a number of filings on February 22, counsel for Beauty Concepts moved to withdraw the opposition proceeding that it waged with the TTAB this summer to block nine trademark applications for SKKN BY KIM that Kardashian’s corporate entity Kimsaprincess Inc. filed with the USPTO “with prejudice and with the applicant’s consent.”
Aside from the answers that counsel for Kimsaprincess Inc. filed in response to the oppositions, there has been little action on this front, as the proceedings have been on hold in light of the parties’ litigation.
(In its answers, counsel for Kimsaprincess Inc. argued, among other things, that the oppositions were “an attempt by [Beauty Concepts] to overstate its purported trademark rights,” which are limited 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 [Kardashian’s] trademark filings—and only for its skin facial services.” With that in mind, Kardashian’s counsel argued that Beauty Concepts “has no rights to ‘skkn’ alone.” Additionally, Kimsaprincess Inc.’s counsel asserted that Beauty Concepts failed 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.”)
At the same time, Beauty Concepts has abandoned three of its pending trademark applications for registration for the SKKN+ word mark and a stylized version that it filed with the USPTO (in June 2022 and March 2021, respectively) for use in connection with “skin care salon services care services,” as well as “retail store services featuring skincare products; online retail store services featuring skincare products.”
Despite the abandonment of its applications for registration, Beauty Concepts is still using the SKKN+ name on its website and across its social media handles, suggesting that continued use of the mark in a limited capacity (i.e., in connection with its Brooklyn, New York-based facial business) may be part of the parties’ agreement.
The dismissal of the lawsuit and the opposition proceedings paves the way for Kardashian’s SKKN by KIM trademark applications, the majority of which were published for opposition this summer, to continue in the pre-registration process. Meanwhile, the application for registration that Kardashian filed for “SKKN” for use on various types of cosmetics/fragrance products will presumably also move forward after being suspended in light of the opposition proceedings.
Trademark and litigation counsel for Beauty Concepts did not respond to a request for comment.
The case is Beauty Concepts LLC v. Kim Kardashian West, et al., 1:22-cv-03797 (EDNY).