Two high-profile beauty brands have settled a trademark fight over the use of the word “DIVINE” on their respective products. On the heels of model Rosie Huntington-Whitely’s clean cosmetics brand Clean Beauty Collaborative, Inc. d/b/a Rose Inc. filing a lawsuit against Pat McGrath Cosmetics (“PMC”), the eponymous company of one of fashion’s most celebrated makeup artists (and subsequently filing an amended complaint), alleging that PMC threatened to file suit against Rose Inc. unless it cease its use of the word “DIVINE” on its products, the clash has come to a close, with Rose Inc. lodging a notice of voluntary dismissal with a federal court in Northern California on September 1.

Rose Inc. first filed its lawsuit against PMC in January 2022, alleging that it received a cease-and-desist letter from counsel for New York-based PMC, which accused Rose Inc. of infringing “the Pat McGrath family of ‘Divine’ marks” by way of its “Blush Divine Radiant Cheek & Lip Color.” (A trademark “family” consists of “a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner.” PMC, for example, uses the “Divine” mark across an array of products – from its “Divine Blush” and “Divine Glow Highlighter” to its “Divine Skin Prep and Prime Duo” and “Divine Brush Duo.”)

In its letter, PMC asserted that its “Divine” marks “have become associated exclusively with Pat McGrath in the cosmetics industry,” and demanded that Rose Inc. “immediately and permanently stop making, importing, selling, and offering to sell any cosmetic under a DIVINE -formative mark,” and that it also deliver to PMC “for destruction all existing inventory of the current Blush Divine product and all promotional materials depicting them.” 

A listing for Rose Inc.'s blush divine radiant lip and cheek color product
One of Rose Inc.’s former “Divine” products

Despite counsel for both sides engaging in discussions in January, Rose Inc. asserted that they were unable to work out their differences, thereby, prompting it to file a declaratory judgment and unfair competition complaint, in furtherance of which it sought a declaration from the court that “the name ‘Blush Divine Radiant Cheek & Lip Color’ and the associated cosmetic product [on] which it is used, do not infringe upon any of the trademarks or other intellectual property rights of PMC,” as it is engaging in fair use of the term. Beyond that, Rose Inc. was angling for a declaration from the court that PMC does not own protectable rights in the “Divine” marks because “the term ‘divine’ is generic, so highly descriptive as to be incapable of functioning as a trademark through acquired distinctiveness, or is merely descriptive and lacks secondary meaning such that the relevant purchasing public does not recognize DIVINE as being a common characteristic to indicate that PMC is the common origin of the goods or services in either the beauty or cosmetic industry.”

Rose Inc. also lodged unfair competition claims, arguing that by “promoting” and “advertising” that it “has ownership to a protectable DIVINE-formative family of marks” when it does not, PMC “made a false or misleading representation of fact about [its] ownership rights” and that such “unlawful, unfair or fraudulent acts and practices” caused Rose Inc. to be damaged.

While the terms of the parties’ settlement are confidential, it is worth noting that Rose Inc.’s Divine products – namely, its Color Divine Blush Contour and Blush Kit and its Divine Color Blush Brush Set – have been renamed in its website so that they no longer make use of the “Divine” name. 

Not the only case that has raised the idea of trademark families as of late, Levi’s made a similar claim in a more recent suit. The denim giant filed a trademark lawsuit against the owner of a recycled denim brand this summer, claiming that by using the “Green Tab” name for his brand, he is running afoul of its rights in the mark, which is part of a family of “famous” marks, including its red tab. In its complaint, Levi’s claims that its use of various colored fabric tabs and the related word marks amount to “a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner.” That case is still underway before the U.S. District Court for the Central District of California. 

Listing for PatMcGrath makeup products

It is worth noting, of course, that there is no telling that the court would have been found that PMC’s various uses of “Divine” amount to trademark uses for the very reason cited by Rose Inc. – it is potentially generic or descriptive, and thus, is incapable of functioning as an indicator of source – or that Rose Inc.’s use is for the purpose of source-indication and thus, infringing (assuming that PMC could show likelihood of confusion). A win for PMC on this front could have been made more difficult by the nature of the goods at issue – cosmetics, which are regularly marketed by way of style names that make use of “words that are not literal color descriptions,” as Anastasia Beverly Hills argued in response to the lawsuit waged against it by Hard Candy over its product style names back in 2019. 

At the same time and for some of the same reasons, it is not difficult to imagine the court pushing back against PMC’s family argument, which would require a showing that PMS is not “simply using a series of similar marks,” but that there is a sufficient level of “recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods,” as the Federal Circuit stated in its decision in J & J Snack Foods Corp. v. McDonald’s Corp.

The case is Amyris, Inc., et al. v. Pat McGrath Cosmetics, Inc., 3:22-cv-00567 (N.D. Cal.)

On August 26, 2022, a PFAS consumer fraud class action lawsuit was filed in New York against Proctor & Gamble over alleged Perfluoroalkyl and Polyfluoroalkyl Substances (“PFAS”) content in the Oral B brand of floss. The lawsuit is the latest in a growing line of PFAS lawsuits that allege that certain consumer products contain PFAS; that the products were marketed as safe for use, healthy, or environmentally friendly; and that consumers would not have purchased the products if they knew that the products contained such manufactured chemicals.

As we predicted in early 2021, increased attention on PFAS content in consumer goods among the scientific community and the media has presented significant risks for various industries, including the cosmetics industry, and our prediction was that the developments would lead to a significant number of lawsuits alleging consumer fraud. Against this background, purveyors of consumer goods, insurers, and investment companies interested in the consumer goods vertical – especially those with niche interest in cosmetics companies – must pay careful attention to the rising number of cosmetics lawsuits at play and the increasing trend of lawsuits targeting the industry in connection with PFAS. 

Oral B PFAS Consumer Fraud Lawsuit

On August 26, 2022, Plaintiff Alan Dalewitz filed a lawsuit in New York federal court seeking a proposed class action against multinational consumer goods corporation Proctor & Gamble. In the lawsuit, Dalewitz alleges that Cincinnati, Ohio-headquartered P&G represented to consumers that its products adhere to “rigorous safety process[es] to analyze every ingredient – before we ever consider putting it in one of our products” and that the company is dedicated to “helping ensure a healthy planet.” Specific to the Oral B dental floss, Dalewitz claims that the product is marketed as “pro health.” With the foregoing in mind, Dalewitz contends that all of the company’s claims regarding the safety of its products and the environmentally friendly nature of the products are false and misleading, and that the presence of PFAS in its dental floss, in particular, was fraudulently concealed from consumers.

Dalewitz is seeking certification of the class action lawsuit (to enable other similarly-situated individuals to join in), damages, fees, costs and a jury trial. Specifically, the proposed class includes any consumer in New York state who purchased the relevant Oral B dental floss products during a certain time period.

Just the Beginning for Consumer Products Companies

With PFAS studies underway, legislation pending that targets consumer goods, and increasing media reporting on PFAS in consumer goods and concerns over human health, product manufacturers should be increasingly wary of lawsuits similar to the one that Proctor & Gamble is currently facing. In fact, there are an increasing number of PFAS consumer fraud cases being filed, with some of the below as representative of recent trends … 

Cosmetics industry – Brown v. Cover Girl, New York (April 1, 2022); Anderson v. Almay, New York (April 1, 2022); Rebecca Vega v. L’Oreal, New Jersey (April 8, 2022); Spindel v. Burt’s Bees, California (March 25, 2022); Hicks and Vargas v. L’Oreal, New York (March 9, 2022); and Davenport v. L’Oreal, California (February 22, 2022).

Food packaging industry – Richburg v. Conagra Brands, Illinois (May 6, 2022); Ruiz v. Conagra Brands, Illinois (May 6, 2022); Hamman v. Cava Group, California (April 27, 2022); Azman Hussain v. Burger King, California (April 11, 2022); Little v. NatureStar, California (April 8, 2022); and Larry Clark v. McDonald’s, Illinois (March 28, 2022).

Feminine hygiene products – Gemma Rivera v. Knix Wear Inc., California (April 4, 2022); Blenis v. Thinx, Inc., Massachusetts (June 18, 2021); and Destini Canan v. Thinx Inc., California (November 12, 2020).

As the above is indicative of, several major companies – from giants like McDonald’s and L’Oreal to smaller players like Thinx – now find themselves embroiled in litigation focused on PFAS-focused false advertising, consumer protection violations, and deceptive statements made in marketing and ESG reports. The lawsuits may well serve as test cases for the plaintiffs’ bar to determine whether similar lawsuits will be successful in any (or all) of the fifty states in this country. With this in mind, companies would be wise to consider the possibility of needing to defend against lawsuits involving plaintiffs in all fifty states for products that contain PFAS.

It should be noted that these lawsuits would only touch on marketing, advertising, ESG reporting, and consumer protection type of issues; separate products lawsuits could follow that take direct aim at obtaining damages for personal injury for plaintiffs from consumer products. Additionally, environmental pollution lawsuits could seek damage for diminution of property value, cleanup costs, and PFAS filtration systems if drinking water cleanup is required.

It is of the utmost importance that businesses along the whole supply chain in the cosmetics industry evaluate their PFAS risk. Public health and environmental groups are readily urging legislators to regulate PFAS at an ever-increasing pace. Similarly, state level EPA enforcement action is increasing at a several-fold rate every year. Now, the first wave of lawsuits take direct aim at the consumer products industry. Companies that did not manufacture PFAS – but merely utilized PFAS in their manufacturing processes – are, therefore, becoming targets of costly enforcement actions at rates that continue to multiply year over year. Lawsuits are also filed monthly by citizens or municipalities against companies that are increasingly not PFAS chemical manufacturers.

John Gardella is a Shareholder and Chief Services Officer at CMBG3 Law.  He is licensed to practice in Massachusetts and Tennessee.

Two celebrity-founded brands are sparring over the name of products within their respective collections. In a newly-filed lawsuit, Amyris and Clean Beauty Collaborative, Inc., the parties behind model Rosie Huntington-Whitely’s clean cosmetics brand Rose Inc. are pushing back against threats of trademark litigation waged by Pat McGrath Cosmetics (“PMC”), the eponymous company of one of fashion’s most celebrated makeup artists. According to the declaratory judgment and unfair competition complaint that they filed in a California federal court last month, Amyris and Clean Beauty (the “plaintiffs”) assert that PMC has threated to file suit against them unless they cease their use of the word “DIVINE” on Rose Inc. products.

In the complaint that they filed on January 28, Amyris and Clean Beauty assert that back in September, they received a cease-and-desist letter from counsel for PMC, alleging that Rose Inc.’s “Blush Divine Radiant Cheek & Lip Color” infringes “the Pat McGrath family of ‘Divine’ marks.” In its letter, PMC asserted that these marks “have become associated exclusively with Pat McGrath in the cosmetics industry,” and thus, demanded that the plaintiffs “immediately and permanently stop making, importing, selling, and offering to sell any cosmetic under a DIVINE -formative mark,” and also deliver to PMC “for destruction all existing inventory of the current Blush Divine product and all promotional materials depicting them.” 

Despite counsel for both sides engaging in several discussions in January, Amyris and Clean Beauty claim that they have been unable to work out their differences, prompting them to file suit and seek a declaration from the court that “the name ‘Blush Divine Radiant Cheek & Lip Color’ and the associated cosmetic product [on] which it is used, do not infringe upon any of the trademarks or other intellectual property rights of PMC, and to the extent that [PMC does] own any actionable rights to the name ‘DIVINE,’ Rose Inc.’s use of that name is protected fair use.” 

Pat McGrath lawsuit
Pat McGrath Cosmetics

Moreover, the plaintiffs are seeking declaratory relief from the court by way of a determination that PMC “does not own protectable rights to a ‘DIVINE-formative’ family of marks.” 

Pushing back against PMC’s allegations in their complaint, the plaintiffs argue that the company lacks the requisite trademark rights in “DIVINE” and the alleged family of “DIVINE-formative” marks necessary to wage viable infringement claims. In terms of the “DIVINE” mark on its own, which PMC asserts it has common law rights in for use on cosmetics, the plaintiffs assert that it is a “commonly used term in the cosmetic industry” to “describe hundreds and thousands of products,” such as those offered up by Lilah Beauty, Melt Cosmetics, L’Occitane, and Parfums Christian Dior, which “have been using and continue to use the word ‘divine’ for beauty products, including blush.” 

As such, Amyris and Clean Beauty contend that the term is “incapable of uniquely identifying PMC as a source identifier of blush or any other product in the cosmetics industry.”

Even if PMC does not have protectable rights in “DIVINE,” the plaintiffs argue that their use of the word does not infringe those rights, as they are not using the word as a trademark (i.e., as an indicator of source), but instead, as a descriptive term that is protected by the fair use doctrine, and that consumers are not likely to be confused about their use of.  On the issue of confusion, the plaintiffs argue that the likelihood is low due to the “widespread use of ‘divine’ as a descriptive or generic part of the names of third-party cosmetics, particularly blush,” which “confirms that customers view the term as descriptive or generic, and that the public is able to distinguish between different marks that include the common terms DIVINE and BLUSH.” 

As for the “family” of PMC “DIVINE” marks, namely, “Divine Rose, Divine Skin and Divine Blush,” the plaintiffs call foul here, as well, essentially arguing that PMC does not have rights in the “DIVINE” mark on its own, and the bar for establishing trademark rights is even higher for families – or groups of marks that have a recognizable common characteristic such that the public not only associates the individual marks – but the common characteristic of the family – with the trademark owner, as well. 

“A family of marks typically requires many years – if not decades – of use before being recognized by the purchasing public as the common originator of goods within the family,” according to plaintiffs, who allege that “PMC has collectively used … the PMC names together for less than a year,” and has not used any of the individual PMC “family” names for more than three years.

“By claiming ownership to a protectable DIVINE-formative family of marks,” the plaintiffs contend that PMC “has promoted a false or misleading representation of facts about PMC’s ownership rights,” and at the same time, has attempted “to establish a nationwide monopoly in the word DIVINE and assert it against other businesses, creat[ing] a chilling effect in the beauty industry.” Still yet, they argue that this “casts doubt [as to] whether members of the industry can continue to use the generic, highly descriptive or merely descriptive term to convey to customers the useful commercial speech and information about the nature of their products” or whether they will face trademark litigation from PMC as a result. 

Pat McGrath lawsuit
One of Rose Inc.’s products

With the foregoing in mind and given that PMC has allegedly “manifested a clear intention to assert federal and common law unfair competition and trademark infringement claims against [them],” Amyris and Clean Beauty seek the aforementioned declarations from the court, while also arguing that PMC has engaged in unfair competition under California state law. In connection with the unfair competition claims, the plaintiffs are seeking injunctive relief to bar PMC from continuing its wrongful course of conduct,” including asserting “ownership in a protectable DIVINE-formative family of marks,” and enjoining it from “asserting or otherwise enforcing PMC Blush and/or a DIVINE-formative family of marks against [them].” 

In terms of the plaintiffs’ likelihood of success, they may have a strong case for arguing that they should be shielded from trademark liability for their use of the term “Divine” in connection with the Rose, Inc.’s Blush Divine Radiant Cheek & Lip Color on the basis that they are not using the term to indicate source but instead, as a descriptive style name. 

Anastasia Beverly Hills prevailed in something of a similar case involving fellow beauty brand Hard Candy. In a decision in 2019, the U.S. Court of Appeals for the Eleventh Circuit determined that it had successfully made a descriptive fair use argument in connection with its use of “hard candy,” arguing that it had not used the term “hard candy” in a trademark sense, but “in a descriptive sense because ‘it was used to describe the sheen’ of the makeup shade that the term labelled.” 

A rep for PMC did not immediately respond to a request for comment. 

The case is Amyris, Inc., et al. v. Pat McGrath Cosmetics, Inc., 3:22-cv-00567 (N.D. Cal.)

After closing all of its physical retail outposts during the initial onset of the pandemic, Glossier announced this summer that it was looking to get back into the brick-and-mortar business. In a blog post in June, founder Emily Weiss stated that “the world of Glossier is ready to exist again in 3D,” and that the company would be opening three new stores “starting in Seattle this August, followed by Los Angeles in the fall, and London in the winter” in furtherance of a larger “retail roadmap to bring Glossier to many more places, including our home base of New York City, in 2022.” 

More recently, Weiss revealed that the company – which closed an $80 million Series E round in July – has been busy “reimagin[ing] the Glossier retail experience,” with a focus on “fostering connection, community, and discovery.” The robust re-focusing on physical retail will be spearheaded by newly-appointed Senior Vice President of Retail Kristy Maynes, who “served as the general manager of Lululemon’s first 40 stores in Canada and opened the athleisure brand’s first locations in Europe,” per Fortune

In addition to serving as a way to enable “digital and offline experiences [to] exist in harmony” by way of “immersive, real-life experiences rooted in discovery and connection,” which Weiss says are “more resonant than ever” even if consumers continue to rely heavily on e-commerce, the $1.8 billion brand’s brick-and-mortar stores will help Glossier to continue to cement its branding in the minds of millennial consumers. This is, of course, something that Glossier has excelled at – from its authenticity-centered ethos, which has permeated into Instagram account from the outset (“Glossier has perfected [its] marketing on Instagram, not only by using models who seem ‘relatable,’ but by reposting content made by regular customers wearing its products, who willingly associate themselves with the brand,” Quartz put it in 2019) to its instantly-recognizable pink bubble wrap pouches

Glossier’s foray back into physical retail involves its millennial pink, of course, which the brand has positioned as its calling card of sorts when that hue is used across cosmetics packaging, including boxes and those translucent bubble wrap bags. The seven-year-old beauty company also maintains trademark rights in – and registrations for – the shape of its perfume bottles, its distinctive “G” logo, and no shortage of its catchy product names (think: Cloud Paint, Balm Dotcom, etc.). Taking its branding exercise a step further, Glossier introduced a display table in the first of its newly-rolled out stores, the top of which the brand claims acts as an indicator of source. 

Glossier display table
Glossier display table

According to the trademark application for registration that it filed with the U.S. Patent and Trademark Office last month (serial no. 97079249), Glossier is asserting rights in “the three-dimensional configuration of the top of a retail display table, [with] said top featuring a three-dimensional pattern appearing as waves” for use in connection with “retail store services featuring cosmetics, makeup, perfumes,” etc. (Note: The brand is not claiming any rights in the use of the display in a specific color, which appears in both white and in its ubiquitous millennial pink in its almost three-month-old Seattle store.) 

Given that the pool of potentially protectable subject matter when it comes to trademarks is broadly open to any “symbols” that are capable of identifying a single source when used on/in connection with certain types of goods or services, the top of Glossier’s tables very well function as a trademark for the brand in the same way as its use of a specific color pink does. 

And it is worth noting that Glossier’s attempt to claim rights in allegedly source-identifying furniture is not an entirely novel one. The burgeoning brand appears to be taking a page from Apple’s book, as the tech titan is famous for maintaining registrations for the layout of its stores, for instance, including, “light brown rectangular tables arranged in a line in the middle of the store parallel to the walls and extending from the storefront to the back of the store.” At the same time, the Cupertino, California-based company also has a long list of design patents for things like Jony Ive-designed tables and credenzas, as well as shopping bags and other product packaging, which the brand may claim trademark rights it once the duration of those patents lapses. 

Glossier’s renewed focus on brick-and-mortar retail is in line with a larger trend of what brands across the board are doing in the wake of the pandemic; buzzy direct-to-consumer underwear brand Parade, for example, recently raised $20 million in a Series B round led by Reformation and Califia Farms backer Stripes, with one of its primary goals being to fund its initial expansion into brick-and-mortar. Elsewhere in the market, brands are working to provide consumers with an omni-channel experience, with an emphasis on both in-store and e-commerce capabilities, with The RealReal’s CFO Matt Gustke, for one, stating early this year that physical stores are important to the luxury reseller, as they “make it easier to sell high value products,” while also leading to “return rates [that] are exceptionally low” compared to online sales. At the same time, margins tend to be notably higher for in-store sales. 

This is a pattern that carries over across brands and industries, and one that is presumably driving at least some of the push by brands to get consumers back into stores, as well as brands’ investment not only in store safety measures but also unique in-store experiences, and in Glossier’s case, source-identifying decor. With this renewed interest in physical retail in mind, chances are, we just might start to see renewed efforts by brands to protect brand-centric assets in their stores in the same vein as Apple and Glossier and in the same way as they have started to claim rights in their digital appearance and attempt to enforce those rights against alleged infringers.

Can the shape of a lipstick case, alone, function as an indicator of the source of the product? That was ones of the questions at the center of a matter involving Guerlain and the packaging of its Rouge G de Guerlain lipstick. In a decision on Wednesday, the European Union General Court handed LVMH-owned Guerlain a win, overturning an earlier determinations of the European Union Intellectual Property Office (“EUIPO”) and its Board of Appeal, both of which refused to register the shape of the French cosmetics and perfume brand’s lipstick case on the basis that the design of the three-dimensional packaging does not “depart significantly” from what others in the beauty segment of the market are doing, and thus, does not have the distinctive character necessary to serve as a trademark. 

In a decision dated July 14, the General Court held that the mark represented in the trademark application that Guerlain filed with the EUIPO in 2018 does, in fact, “have distinctive character because it departs significantly from the norm and customs of the lipstick sector,” and focused specifically on two points in furtherance of its decision. 

First, the court held that “the assessment of whether [a mark] has distinctive character is not based on the originality or the lack of use of the mark in the field to which the goods and services concerned belong,” and more than that, “mere novelty of [a] shape is not sufficient in order to conclude that there is distinctiveness.” At the same time, the court asserted that “the fact that a sector is characterized by a wide variety of product shapes does not mean that a new possible shape will necessarily be perceived as one of them.” 

Second, the court stated that just because certain products, such as Guerlain’s refillable lipstick cases, “have a high-quality design” does not, on its own, mean that the 3D shape of those goods can be distinguished from the goods of others in the market. While the court claimed that it is appropriate to take into account “the aesthetic aspect of a mark,” such consideration does not amount to an assessment of “the attractiveness of the product in question,” and instead, is done for the purpose of determining “whether [the] product is capable of generating an objective and uncommon visual effect” among the relevant public, and thereby, differentiating it from other products in the market.

With the foregoing in mind, the General Court held that the shape of the Rouge G de Guerlain lipstick case – which it says is “reminiscent of that of a boat hull or a baby carriage” – is “uncommon for a lipstick and differs from any other shape existing on the market.” Specifically, the court asserted that the shape at issue “differs significantly from the images taken into consideration by the EUIPO’s Board of Appeal, most of which represented cylindrical and parallelepiped lipsticks.” The presence of the “small oval embossed shape [of the Rouge G de Guerlain lipstick case] is unusual and contributes to the uncommon appearance of the mark,” the General Court’s panel found. Still yet, the court determined that the fact that the lipstick “cannot be placed upright reinforces the uncommon visual aspect of its shape.” 

As a result of its foregoing findings, the General Court held that “the relevant public will be surprised by this easily memorable shape” of the lipstick case – which Guerlain first introduced in 2009 – and “will perceive it as departing significantly from the norm and customs of the lipstick sector and capable of indicating the origin of the goods concerned,” thereby, enabling the court to find that the mark has distinctive character, and can be registered with the EUIPO for use on “lipstick” products. 

Reflecting on the significance of the case, Eleonora Rosati, a Professor of Intellectual Property Law and Director of the Institute for Intellectual Property and Market Law at Stockholm University, says that the General Court’s decision “represents a sensible outcome and brings about some refreshing news to trademark applicants seeking to register shape or less conventional marks.” It is also a particularly welcome development for the fashion industry, she says, as “in the past 2-3 years, alone, things have been rather gloomy for trademark applications relating to such signs.” For instance, she notes that the Court of Justice of the European Union “held that Birkenstock’s surface pattern mark is devoid of distinctiveness (C-26/17 P); LVMH has not yet been able to secure registration of its Damier Azur pattern (though things may look up now; T-105/19); the shape of Moon Boots may be protected by copyright (in Italy), but it has so far been unsuccessful on the trademark registration front (1093/2019-1); and Buffalo Boots’ position mark has not yet been considered registrable (2167/2019-1).” 

Echoing Rosati’s sentiment, K&L Gates’s Simon Casinader and Katherine McDermott assert that Guerlain’s success in registering its Rouge G de Guerlain lipstick mark is good news for cosmetic and fragrance producers across the board, which “can hold out hope for the future and their ability to register distinctive 3D packaging” of their own.