On April 23, 2019, the U.S. Court of Appeals for the Eleventh Circuit affirmed the District Court’s finding that Anastasia, Beverly Hills, Inc., a cosmetics company, established a fair use defense in an infringement action brought by competitor Hard Candy, LLC. Hard Candy originally sued, alleging that Anastasia’s “Gleam Glow Kit” makeup product infringed the Hard Candy trademark. Anastasia’s Gleam Glow Kit is a flip-open makeup palette containing four different shades of facial highlighter, one of which was named “Hard Candy.” The Court of Appeals affirmed the District Court’s finding that (1) there was no likelihood of confusion between Anastasia’s highlighter makeup shade called “hard candy” and the branded makeup of the Hard Candy company; and (2) Anastasia established a descriptive fair use defense against the trademark infringement alleged by Hard Candy.

To prevail on its trademark infringement claim, a plaintiff must establish that a defendant’s use of a mark creates a likelihood of confusion with its trademark. The District Court applied a seven-factor test to determine whether Anastasia’s Gleam Glow Kit created a likelihood of consumer confusion. The Court of Appeals agreed that the “similarity of mark” factor weighed in favor of Anastasia, because while Anastasia uses the same words, all in capital letters (HARD CANDY), the Court must consider the “overall impression created by the use of the mark as a whole, rather than comparing the individual features.”

The Court of Appeals made clear that in order to consider the “overall impressions” that the marks create, it had to evaluate the sound, appearance, meaning, and “manner in which they are used.” In doing so, the Court of Appeals rejected Hard Candy’s argument that because “HARD CANDY” was technically identical to the company’s mark – HARD CANDY, in capital letters – the similarity of mark factor should have weighed in its favor. In evaluating the “manner of use” of the marks, courts evaluate the visual placement of the mark on the product, whether the mark is used to label a specific part of the product, and the size of the print. The Court of Appeals noted that “HARD CANDY” appeared only on the back and inside of the Gleam Glow Kit, naming one shade of a product that was otherwise clearly and prominently featured as an Anastasia Beverly Hills mark. The Court of Appeals agreed with the District Court’s determination that it was reasonable to find that Anastasia’s “Hard Candy” makeup shade name was used in a “manner” that was not similar enough to the Hard Candy company mark to induce confusion with the Hard Candy brand.

The Court of Appeals also concluded that Anastasia was entitled to the fair use defense of trademark infringement because it used the “hard candy” term in a “descriptive sense.” The fair use defense forbids trademark registrants from appropriating descriptive terms for exclusive use. Accordingly, trademarks are generally categorized as either “arbitrary” or “descriptive.” An arbitrary trademark, like Hard Candy’s mark, is a term that bears no relationship to the product itself. In contrast, to be considered descriptive, a mark does not need to depict the product itself, but rather must identify a “characteristic or quality” of the product, such as its color, odor, function, dimensions, or ingredients. The District Court had found that “hard candy” was used in a descriptive sense because it was used to describe the “sheen” and “shimmer” of the peach-pink makeup shade that it was designated to label. Interestingly, Anastasia says it chose the name because the makeup shade “had a shimmer that reminded the developer of candies her grandmother gave her when she was young.” In addition, the District Court relied on evidence offered by Anastasia showing that cosmetics companies regularly name makeup shades with words that are not names of colors, such as the three other shards in the Gleam Glow Kit, named “Starburst,” “Mimosa,” and “Crushed Pearl.” The Court of Appeals concluded that this common practice of naming makeup shades was relevant to cosmetics consumers’ perception that Anastasia’s “Hard Candy” makeup shade name was used in a descriptive sense.

The case is Hard Candy, LLC v. Anastasia Beverly Hills, Inc., 921 F.3d 1343 (11th Cir. 2018).