Two brands founded by celebrities are fighting over the names of the products in their respective collections. In a recently filed lawsuit, Amyris and Clean Beauty Collaborative, Inc., the parties behind model Rosie Huntington-Whitely’s own cosmetics brand, Rose, Inc., fend off threats of trademark litigation by Pat McGrath Cosmetics (“PMC”), the namesake company of one of fashion’s most celebrated makeup artists. According to the declaratory judgment and unfair competition lawsuit they filed in California federal court last month, Amyris and Clean Beauty (the “plaintiffs”) claim that PMC threatened to sue them unless they keep using the word “DIVINE”. about Rose, Inc. products.
In the lawsuit they filed on January 28, Amyris and Clean Beauty claim that in September, they received a cease and desist letter from PMC’s attorney, alleging that “Blush Divine Radiant Cheek & Lip Color “de Rose, Inc.” infringes “the Pat McGrath family of ‘god’ marks. In its letter, PMC asserted that these marks “have become associated exclusively with Pat McGrath in the cosmetics industry”, and therefore demanded that the plaintiffs “immediately and permanently cease manufacturing, importing, selling and offering sell any cosmetics under a DIVINE-forming brand,” and also deliver to PMC “for destruction all existing inventory of the current Divine Blush product and all promotional materials representing them.
Although attorneys for both parties engaged in several discussions in January, Amyris and Clean Beauty say they were unable to resolve their differences, prompting them to file a lawsuit and seek in court to declare that “the name ‘Blush Divine Radiant Cheek & Lip Color’ and the associated cosmetic product [on] where used, do not infringe any of PMC’s trademarks or other intellectual property rights, and to the extent [PMC does] own actionable rights to the name “DIVINE”, Rose, Inc.’s use of that name is protected by fair use. »
Additionally, plaintiffs seek declaratory relief from the court through a ruling that PMC “does not possess protectable rights in a ‘DIVINE-formative’ family of marks.”
Pushing back against PMC’s allegations in their complaint, plaintiffs argue that the company lacks the requisite trademark rights to “DIVINE” and the purported “DIVINE-formative” trademark family necessary to bring viable infringement claims. With respect to the “DIVINE” mark itself, over which PMC claims to have common law rights for use on cosmetics, the plaintiffs claim that it is a “term commonly used in the cosmetics industry” to “describe hundreds and thousands of products”, such as those offered by Lilah Beauty, Melt Cosmetics, L’Occitane and Parfums Christian Dior, which “have used and continue to use the word ‘divine’ for cosmetics, including blush”.
As such, Amyris and Clean Beauty argue that the term is “unable to uniquely identify PMC as a source identifier for blush or any other cosmetic industry product”.
Even though PMC has no protectable rights to “DIVINE”, plaintiffs argue that their use of the word does not infringe those rights, as they are not using the word as a trademark (i.e. as an indicator of source), but rather, as a descriptive term protected by the doctrine of fair use, and which consumers are not likely to be confused as to its use. On the issue of confusion, plaintiffs argue that the likelihood is low due to “the widespread use of ‘divine’ as a descriptive or generic part of the names of third-party cosmetics, particularly blush”, which “confirms that customers see the term as descriptive or generic, and that the public is able to distinguish between different brands that include the common terms DIVINE and BLUSH.
With respect to PMC’s “DIVINE” trademark “family”, namely “Divine Rose, Divine Skin and Divine Blush”, plaintiffs here also allege fault, essentially arguing that PMC has no rights to the trademark. “DIVINE” on own, and the bar for establishing trademark rights is even higher for families – or groups of marks that have a recognizable common characteristic such that the public not only associates the individual marks – but the common characteristic of the family – to the owner of the mark, too.
“A family of marks generally requires many years, if not decades, of use before it becomes recognized by the buying public as the common creator of the products within the family,” according to the plaintiffs, who allege that “PMC has collectively used…the PMC names together for less than a year” and has not used any of the individual PMC “surnames” for more than three years.
“In claiming ownership of a protectable DIVINE-formative family of marks”, plaintiffs allege that PMC “promoted a false or misleading representation of facts concerning PMC’s proprietary rights”, and at the same time, attempted “d ‘establish a national monopoly in the DIVINE word and assert it against other businesses, create[ing] a chilling effect in the beauty industry. Yet they argue that it “casts doubt [as to] whether members of the industry can continue to use the term generic, highly descriptive or simply descriptive to convey useful commercial speech and information about the nature of their products to customers” or whether they will face trademark litigation from PMC’s share accordingly.
With the foregoing in mind and given that PMC allegedly “demonstrated a clear intention to bring a federal and common law unfair competition and trademark infringement action against [them]”, Amyris and Clean Beauty seek the above statements from the court, while arguing that PMC engaged in unfair competition under California State law. In the unfair competition claims, plaintiffs seek an injunction restraining PMC from continuing its wrongful conduct”, including asserting “ownership of a protectable formative DIVINE trademark family”, and prohibiting it “from otherwise asserting or applying PMC Blush and/or DIVINE-formative family of brands against [them].”
Regarding the likelihood of success for plaintiffs, they may have a strong case to argue that they should be shielded from trademark liability for their use of the term “Divine” in connection with Divine Radiant Cheek Blush & de Rose, Inc. Lip Color on the basis that they do not use the term to indicate source but rather as a descriptive style name.
Anastasia Beverly Hills prevailed in a similar case involving fellow beauty brand Hard Candy. In a 2019 decision, the United States Court of Appeals for the Eleventh Circuit determined that it had successfully made a descriptive fair use argument in connection with its use of “hard candy”, arguing that she hadn’t used the term “hard candy” in a trademark sense, but “in a descriptive sense because ‘it was used to describe the glow’ of the makeup shade the term tagged.”
A representative for PMC did not immediately respond to a request for comment.
The case is Amyris, Inc., et al. against Pat McGrath Cosmetics, Inc., 3:22-cv-00567 (ND Cal.)