The Eighth Circuit Court of Appeals has determined that while Lovely Skin, Inc.’s two trademarks—LOVELYSKIN and LOVELYSKIN.COM—should not have been canceled for an alleged failure to acquire distinctiveness through substantially exclusive use for the five years preceding their registration, the company did not demonstrate a likelihood of confusion between its trade- marks and those of online cosmeceutical competitor livelyskin.com. Lovely Skin, Inc. v. Ishtar Skin Care Products, LLC, No. 12-3631 (8th Cir., decided March 13, 2014). Thus, the court reversed a lower court’s ruling canceling the registrations and affirmed its ruling entering judgment in the defendant’s favor in this trademark-infringement lawsuit.
According to the court, the defendant did not introduce sufficient evidence to overcome the strong presumption of validity of Lovely Skin’s trademark registration and establish a prima facie case of invalidity. The defendant introduced evidence of third-party registrations—LOVE YOUR SKIN, registered to a dermatologist; Lovely Skin, Inc., registered to an aesthetician; and Lovely Nails & Skin Care—to show that Lovely Skin’s trademarks had not acquired distinctiveness when they were registered. The court found, however, that the defendant failed to “present any evidence regarding how these third parties had used the marks, if at all, in the five years before Lovely Skin’s trademarks were registered. Nor did it offer evidence of how, or even if, the third parties promoted or advertised these marks during those years or whether the public recognized these third party marks.”
As to Lovely Skin’s claims of trademark infringement, the court agreed with the lower court that its “descriptive” marks “were both conceptually and commercially weak,” the defendant’s competing marks were not identical, evidence of actual confusion was scarce, and both parties “operate in a niche market selling expensive products.” Because Lovely Skin’s products sell for an average of $185 and some are as costly as $400, the likelihood of confusion is reduced “because consumers will exercise a high degree of care when making their purchases.”The court also noted that Lovely Skin’s marks had not attained a strong secondary meaning because most of the company’s marketing displays the marks of the third-party products it sells, primarily online, rather than its own trademarks. Accordingly, the court determined that the probability of confusion was low.