Target is being accused of stocking products that co-opt the trademark-protected design a novel dry makeup brush cleaner and then going so far as to stock the “identical product” in confusingly similar packaging and under the same name as the original. According to the complaint that it filed in a federal court in California on November 16, beauty tool-maker Vera Mona claims that its founder and CEO Leticia Cabrera-Calvo “invented [a] first-of-its-kind dry makeup brush cleaner,” which she named “Color Switch.” Due to its ability to enable users to streamline their makeup application processes, Color Switch “immediately became popular among makeup artists and industry experts, as well as with general consumers,” the Southern California-based company asserts.
In addition to its incontestable trademark rights in the Color Switch trademark, which was first registered in March 2015 for use in connection with “the manufacture, marketing, and sale of its dry makeup brush cleaner,” Vera Mona alleges that it maintains trade dress rights in the product packaging for the Color Switch product. Specifically, it states that such trade dress rights extend to the product’s “circular metal packaging (giving the product a high-end look and feel), which prominently displays the Color Switch registered mark on the lid of the tin and is placed in a square outer box with a clear window (so a consumer can view the tin), utilizing foundational colors of purple, blue/turquoise, pink, and white.”
Vera Mona argues that as a result of its continuous use of the trade dress in connection with the sale of the Color Switch branded product over the past nine years, it has acquired secondary meaning, and thus, “consumers and industry professionals, alike, know that [the] trade dress signifies a high-end product that originates from [the Vera Mona brand].”
Against that background, the plaintiff contends that on January 30, 2019, it became aware that Target was selling a brush cleaner by Sonia Kashuk that was “similar to the Color Switch branded product.” In addition to the similarity of the two companies’ products, themselves, Vera Mona alleges that the Sonia Kashuk product also use of “confusingly similar design elements, identical color schemes, and similar product packaging” in a move that was “likely to cause confusion, mistake or deception of consumer[s] and the public.” Such a likelihood of confusion is further heightened, per Vera Mona, since both companies “advertise extensively on social media,” making it so that their customers “are likely to encounter both parties’ products.”
As soon as it became aware of Target’s stocking of the lookalike Sonia Kashuk product back in 2019, Vera Mona maintains that it contacted Target via email to alert the retail giant that it was the seller of “the very first dry makeup brush cleaner, Color Switch.” To make matters worse, Vera Mona asserts that despite numerous emails with Target in which the Minneapolis-headquartered retailer was “put on notice of [Vera Mona’s] trademark rights in the Color Switch brand,” Vera Mona says that it discovered that Target chose to further “capitalize on its popular, well respected, high-end trademarked Color Switch brand mark by selling [another] nearly identical brush cleaner in nearly identical packaging” – albeit this time, it used the “Color Switch” brand name on the Brush Blend Beautiful product’s “packaging and tin.”
A few quick notes: In case you are wondering why Vera Mona names Target as the sole defendant here and not Sonia Kashuk and/or Brush Blend Beautiful, it is not because Target is the deepest-pocketed party in the mix, but because Sonia Kashuk is owned by Target (it acquired the company in 2015) and Brush Blend Beautiful appears to be a Target private label. As for the similarity of the companies’ products, that is not immediately clear. While Vera Mona includes images of its Color Switch product in exhibits attached to the complaint, it does not include any images of the allegedly infringing products, which is an interesting (and potentially telling?) move.
Finally, looking beyond the alleged use of the “Color Switch” trademark by Target on the Brush Blend Beautiful product, which seems – on its face – to make for a reasonable trademark infringement claim, the claim that Vera Mona really seems to want to make here is a patent one. Allegations about how Cabrera-Calvo “invented the first-of- its-kind dry makeup brush cleaner” (which is in the complaint) and about how “original inventors are continuously robbed of their ideas by large conglomerates … [that] work with their existing vendors who merely copy original inventions and repackage them” (from the Vera Mona’s letters to Target) come to mind here. However, in lieu of a utility or design patent for any novel elements of the product or its ornamental design, Vera Mona relies to trade dress infringement to address Target alleged copying of the product, itself.
With the foregoing in mind, Vera Mona sets out claims of trademark infringement, unfair competition, and unregistered trade dress infringement, and is seeking monetary damages, including punitive damages for Target’s “willful and malicious conduct.”
The case is Vera Mona, LLC v. Target Corporation, 5:23-cv-02340 (C.D. Cal.)
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