IP Law Daily, TRADEMARK NEWS—Fashion firm alleges Hailey Bieber skincare line infringes on RHODE mark, (Jun 22, 2022)

By Jonathan Anderson

The lawsuit is seeking treble and punitive damages for what the plaintiff asserts is intentional and willful conduct.

The fashion company Rhode-NYC LLC has filed a lawsuit against celebrity Hailey Bieber and a businesses she controls, alleging trademark infringement after she launched a skincare product line also named Rhode. The lawsuit alleges trademark infringement, unfair competition, and false designation of origin under the Lanham Act, and trademark infringement and unfair competition under New York common law. The suit seeks a preliminary and permanent injunction from unauthorized use of the RHODE mark in various contexts, an award of Bieber’s profits for use of the mark, and treble and punitive damages (Rhode-NYC, LLC v. Rhodedeodato Corp., June 21, 2022, Khatau, P).

Background. Plaintiff, Rhode-NYC, LLC, owns and produces the clothing and lifestyle brand RHODE. The company, which was founded in 2014, owns multiple U.S. trademark registrations for the RHODE mark, including for clothing, handbags, textiles, children’s and women’s clothing, hair accessories, dolls, puzzles, and holiday ornaments. The company has pending trademark applications for footwear, men’s clothing and accessories, housewares, and other products. The company alleges it also has established common law rights to the RHODE mark.

Defendants are Rhodedeodato Corp., HRBeauty, LLC dba Rhode, and Bieber, whose middle name is Rhode. Bieber is married to pop star Justin Bieber, both of whom have wide followings on social media. On June 15, 2022, Bieber launched the skincare product line under the mark RHODE.

Allegations. The lawsuit alleges that Hailey Bieber was “fully aware” of the Rhode clothing line’s trademark registrations, in part because she offered to buy them, but the plaintiff declined the offer. In November 2018, Bieber filed a trademark application to register the mark RHODE in stylized form for “clothing” in International Class 25. The plaintiff’s trademark registration was cited against Bieber’s application and Bieber subsequently abandoned the application.

Over the next several years, Bieber filed additional trademark applications for beauty and cosmetic products in International Class 3 for RHODE and HAILEY RHODE BEAUTY, and in International Classes 9, 18, 25, and 35 for clothing, bags, and other goods for the mark RHODE. Bieber sought these registrations despite communications from plaintiff’s counsel that Bieber’s marks were confusingly similar to the plaintiff’s marks, according to the complaint.

The lawsuit alleges that Bieber’s use of the RHODE mark creates significant confusion and includes initial evidence of actual confusion among consumers. The suit further argues that Bieber’s use of the mark forecloses the ability of the plaintiff to partner with other brands and erodes the company’s value. “Despite their accomplishment, no reasonable buyer or investor is likely to purchase or back a brand that’s entire brand identity has been eclipsed by a celebrity brand with an identical name,” the complaint states.

Causes of action. The plaintiff filed a complaint in the Southern District of New York on June 21, 2022, alleging four causes of action. Count 1 alleges trademark infringement under 15 U.S.C. § 1114. Count 2 alleges trademark infringement, unfair competition, and false designation of origin under 15 U.S.C. § 1125(A)(1)(A). Count 3 alleges trademark infringement under New York common law. Count 4 alleges unfair competition under New York common law.

Relief sought. The complaint seeks a preliminary and permanent injunction against Bieber from unauthorized use of the RHODE mark in multiple contexts and variations. The suit also demands that Bieber destroy all inventory containing the RHODE mark and recall all promotional material with the mark. The suit seeks an award of attorney fees, Bieber’s profits, and damages, including treble and punitive damages for intentional and willful conduct.

The case is No. 1:22-cv-05185.

Attorneys: Lisa T. Simpson (Orrick, Herrington & Sutcliffe LLP) for Rhode-NYC, LLC.

Companies: Rhodedeodato Corp.

News: Trademark NewYorkNews