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.