By: Annabelle Hentz
Resident “cool girl” Hailey Bieber launched her first ever skincare line, “rhode,” this past summer. While her launch was met with excitement from her almost 50 million Instagram followers, it was also welcomed with a trademark infringement lawsuit. Less than a week after its launch, New York based fashion line RHODE (herein “RHODE-NYC”), filed a lawsuit in the U.S District Court for the Southern District of New York claiming trademark infringement. RHODE-NYC, created in 2014 by two former college roommates, Purna Khatau and Phoebe Vickers, is a luxury clothing and accessories brand that has been worn by celebrities and influencers alike. The line has an international presence and is sold at a variety of high-end retail stores such as Bergdorf Goodman, Neiman Marcus, and Saks Fifth Avenue. Their estimated profit for 2022 is allegedly $14.5 million.
Trademark infringement is governed by the United States Trademark Act (the “Lanham Act”). Under the Lanham Act, infringement has occurred when an unauthorized party has used any word, term, name, symbol, or device likely to cause confusion, or mistake, or deception as to the originally registered party. Further, under 15 U.S.C. § 1114, remedies for infringement are available when, “any person, without the consent of original registrant, has used in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any good or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive by buyers and the consuming public.” The likelihood of causing confusion, mistake, or deception also attaches to whether the infringing party applied the previously registered mark to any such reproduction, packages, wrappers, labels, or advertisements intended to be used in commerce.
The timeline of events is crucial to understand the severity of the legal battle between RHODE-NYC and rhode and why RHODE-NYC isn’t going down without a fight. RHODE-NYC first applied for a U.S trademark registration for the mark “RHODE RESORT” in June 2013. The term “RESORT” was deemed descriptive, and was registered in May 2014 to include dresses, tops, pants, shorts, skirts, tunics, caftans, jumpsuits, cardigans, rompers, and scarves. In March 2017, RHODE-NYC applied for the mark “RHODE” for the aforementioned items and was successfully registered in September 2017. Given the success of the brand, RHODE-NYC planned to expand into other markets and filed two U.S. trademark applications in June 2019 for the RHODE mark. The application covered both handbags and footwear, the former of which successfully registered in February 2021.
To date, RHODE-NYC owns three U.S. trademark registrations for the RHODE mark, including clothing, handbags, textiles, children’s and women’s clothing, hair accessories, dolls, puzzles, and holiday ornaments. RHODE-NYC also has several other trademark applications pending with the U.S. Patent and Trademark Office representing a wide variety of products they plan to launch. RHODE-NYC also has trademark rights in its hashtag, “ontherhode,” which it has utilized in marketing and interstate commerce since 2014.
Now is when things get complicated. On November 16, 2018, Bieber’s agents filed a U.S. trademark application to register a mark, “rhode,” in stylized form. This application specified that the intended use of the mark would be specifically for clothing. Also on this exact date, counsel for Bieber offered to buy RHODE-NYC’s trademark registration, to which RHODE-NYC declined. In April 2019, rhode’s “RHODE” trademark was denied due to the listed use of clothing, and potential for confusion, to which rhode abandoned their application. Bieber’s agents then filed an application for “HAILEY RHODE” for clothing in August 2019.
In 2020, Bieber’s agents filed three U.S. trademark applications, all in the class of beauty and cosmetic products: one for a standard “RHODE” mark, a stylized “RHODE” mark, and one for “HAILEY RHODE BEAUTY.” During this time, RHODE-NYC contacted rhode / Bieber to express concerns about their intention to use the “RHODE” mark. They argued this would be confusingly similar to the RHODE-NYC brand as they already successfully obtained the “RHODE” mark – keeping in mind RHODE-NYC is registered as “RHODE.” Counsel for Bieber denied any potential for confusion, as they were planning to drop the use of “RHODE” for clothing. Then, in May 2022, rhode again filed an application for “RHODE” on clothing. This application included a variety of intents-to-use, including clothing, handbags, and a variety of other goods. As a reminder, at this point RHODE-NYC successfully has trademark registrations for the “RHODE” mark for clothing, handbags, and pending applications for a variety of other products.
Amidst the above-mentioned legal controversy, Bieber launched rhode in June 2022. RHODE-NYC filed an emergency injunction to stop the use of their registered mark, to which the judge ruled in favor of Bieber.
The lawsuit between RHODE-NYC and rhode is an imperative example as to why trademarking regulation laws were put into place. These laws give entrepreneurs security when creating their business and building their brand while preserving goals of the future. The timeline of filing from both parties suggests that Bieber was aware of the potential conflicts that would arise and completely disregarded them. Her status as a model and socialite, as well as her famous connections, begs the question of whether her notoriety has and will continue to impact the standard of regulations that she should be subject to. The quintessential goal of the Lanham Act is to avoid confusion amongst consumers. In this age of technology and social media marketing, issues have already begun to arise with the misuse of tagging rhode as RHODE-NYC, and vice versa: internet search results, incorrect use of both Instagram handles, as well as rhode using RHODE-NYC’s registered hashtag “onetherhode” to promote their launch. Confusion like this is detrimental to a business, especially one formed organically without any preexisting fanbase to help promote the brand.
Khatau and Vickers are not only excellent examples of self-made success, but also hardworking women in business. Bieber, undoubtedly a fashion inspiration for many, was born with a platform that has only expanded over time. Ideally, business owners should have the freedom to pursue their passions and expenditures without the risk of undue encroachment from competitors and businesses alike. Creation and creativity are key elements to entrepreneurship, and while an established fan base is extremely helpful in bringing about business success, this should not allow those with that preexisting power to break the rules others must follow.
Student Bio: Annabelle Hentz is a second-year law student at Suffolk University Law School. She is a staff writer on the Journal of High Technology Law and is a member of the Executive Board of the Women’s Law Association on the Diversity, Equity, and Inclusion Committee. Annabelle received a Bachelor of Business Administration in Marketing from the University of Massachusetts’ Isenberg School of Management.
Disclaimer: The views expressed in this blog are the views of the author alone and do not represent the views of JHTL or Suffolk University Law School.
