On March 11, 2013, the US District Court for the Central District of California granted Lee Tillett, Inc.’s (Tillett) motion for preliminary injunction preventing Boldface Group, Inc. (Boldface), which sells the makeup line Khroma Beauty by Kourtney, Kim, and Khloe Kardashian, from using the mark KHROMA. Boldface has appealed the order to the Ninth Circuit.
As previously reported by Arent Fox, Boldface partnered with the Kardashians to launch Khroma Beauty, a makeup line featuring a variety of cosmetics available through several retail stores. The company filed two federal trademark applications for the marks KHROMA BEAUTY BY KOURTNEY, KIM AND KHLOE and KARDASHIAN KHROMA. After receiving a cease and desist letter from Tillett, the owner of US Registration No. 4,079,066 for the mark KROMA covering cosmetics, Boldface filed an action for declaratory judgment before the US District Court for the Central District of California. Tillett responded by filing a motion for preliminary injunction.
Noting that Tillett’s ownership of a federal registration for the KROMA mark provided a presumption of validity, the court found that the visual, phonetic, and connotative similarities between the marks, as well as the clear overlap in products and instances of actual confusion, all supported a finding of likelihood of confusion between Boldface’s and Tillett’s marks. Moreover, because Boldface had actual knowledge of Tillett’s rights in the KROMA mark and yet chose to launch the KHROMA line, the court noted that Boldface’s intent weighed in favor of a likelihood of confusion. Since Tillett demonstrated actual irreparable harm through loss of business opportunities, customers, and goodwill, the court granted a preliminary injunction, but agreed to stay entry of the order to allow Boldface to file an appeal with the Ninth Circuit. Boldface subsequently filed its appeal.
This case continues to highlight the importance of carefully selecting and clearing a mark before adoption to avoid future conflicts. Moreover, while cease and desist letters are often a useful tool to address conflicts, companies should be mindful that the content of the letters and responses to these letters can be used as evidence in litigation proceedings.