Magnificence Manufacturers Rose Inc., Pat McGrath Cosmetics Conflict Over “Divine” Trademark

Two celebrity-founded manufacturers are sparring over the title of merchandise inside their respective collections. In a newly-filed lawsuit, Amyris and Clear Magnificence Collaborative, Inc., the events behind mannequin Rosie Huntington-Whitely’s clear cosmetics model Rose Inc. are pushing again in opposition to threats of trademark litigation waged by Pat McGrath Cosmetics (“PMC”), the eponymous firm of considered one of vogue’s most celebrated make-up artists. In response to the declaratory judgment and unfair competitors grievance that they filed in a California federal courtroom final month, Amyris and Clear Magnificence (the “plaintiffs”) assert that PMC has threated to file swimsuit in opposition to them except they stop their use of the phrase “DIVINE” on Rose Inc. merchandise.

Within the grievance that they filed on January 28, Amyris and Clear Magnificence assert that again in September, they acquired a cease-and-desist letter from counsel for PMC, alleging that Rose Inc.’s “Blush Divine Radiant Cheek & Lip Shade” infringes “the Pat McGrath household of ‘Divine’ marks.” In its letter, PMC asserted that these marks “have turn into related completely with Pat McGrath within the cosmetics trade,” and thus, demanded that the plaintiffs “instantly and completely cease making, importing, promoting, and providing to promote any beauty beneath a DIVINE -formative mark,” and in addition ship to PMC “for destruction all current stock of the present Blush Divine product and all promotional supplies depicting them.” 

Regardless of counsel for each side partaking in a number of discussions in January, Amyris and Clear Magnificence declare that they’ve been unable to work out their variations, prompting them to file swimsuit and search a declaration from the courtroom that “the title ‘Blush Divine Radiant Cheek & Lip Shade’ and the related beauty product [on] which it’s used, don’t infringe upon any of the logos or different mental property rights of PMC, and to the extent that [PMC does] personal any actionable rights to the title ‘DIVINE,’ Rose Inc.’s use of that title is protected truthful use.” 

Pat McGrath lawsuit
Pat McGrath Cosmetics

Furthermore, the plaintiffs are looking for declaratory reduction from the courtroom by the use of a willpower that PMC “doesn’t personal protectable rights to a ‘DIVINE-formative’ household of marks.” 

Pushing again in opposition to PMC’s allegations of their grievance, the plaintiffs argue that the corporate lacks the requisite trademark rights in “DIVINE” and the alleged household of “DIVINE-formative” marks essential to wage viable infringement claims. When it comes to the “DIVINE” mark by itself, which PMC asserts it has frequent legislation rights in to be used on cosmetics, the plaintiffs assert that it’s a “generally used time period within the beauty trade” to “describe a whole bunch and hundreds of merchandise,” corresponding to these supplied up by Lilah Magnificence, Soften Cosmetics, L’Occitane, and Parfums Christian Dior, which “have been utilizing and proceed to make use of the phrase ‘divine’ for magnificence merchandise, together with blush.” 

As such, Amyris and Clear Magnificence contend that the time period is “incapable of uniquely figuring out PMC as a supply identifier of blush or some other product within the cosmetics trade.”

Even when PMC doesn’t have protectable rights in “DIVINE,” the plaintiffs argue that their use of the phrase doesn’t infringe these rights, as they don’t seem to be utilizing the phrase as a trademark (i.e., as an indicator of supply), however as an alternative, as a descriptive time period that’s protected by the truthful use doctrine, and that customers are usually not more likely to be confused about their use of.  On the difficulty of confusion, the plaintiffs argue that the chances are low as a result of “widespread use of ‘divine’ as a descriptive or generic a part of the names of third-party cosmetics, significantly blush,” which “confirms that clients view the time period as descriptive or generic, and that the general public is ready to distinguish between completely different marks that embody the frequent phrases DIVINE and BLUSH.” 

As for the “household” of PMC “DIVINE” marks, specifically, “Divine Rose, Divine Pores and skin and Divine Blush,” the plaintiffs name foul right here, as properly, basically arguing that PMC doesn’t have rights within the “DIVINE” mark by itself, and the bar for establishing trademark rights is even greater for households – or teams of marks which have a recognizable frequent attribute such that the general public not solely associates the person marks – however the frequent attribute of the household – with the trademark proprietor, as properly. 

“A household of marks sometimes requires a few years – if not a long time – of use earlier than being acknowledged by the buying public because the frequent originator of products inside the household,” in line with plaintiffs, who allege that “PMC has collectively used … the PMC names collectively for lower than a 12 months,” and has not used any of the person PMC “household” names for greater than three years.

“By claiming possession to a protectable DIVINE-formative household of marks,” the plaintiffs contend that PMC “has promoted a false or deceptive illustration of details about PMC’s possession rights,” and on the similar time, has tried “to determine a nationwide monopoly within the phrase DIVINE and assert it in opposition to different companies, creat[ing] a chilling impact within the magnificence trade.” Nonetheless but, they argue that this “casts doubt [as to] whether or not members of the trade can proceed to make use of the generic, extremely descriptive or merely descriptive time period to convey to clients the helpful business speech and details about the character of their merchandise” or whether or not they are going to face trademark litigation from PMC in consequence. 

Pat McGrath lawsuit
Certainly one of Rose Inc.’s merchandise

With the foregoing in thoughts and provided that PMC has allegedly “manifested a transparent intention to claim federal and customary legislation unfair competitors and trademark infringement claims in opposition to [them],” Amyris and Clear Magnificence search the aforementioned declarations from the courtroom, whereas additionally arguing that PMC has engaged in unfair competitors beneath California state legislation. In reference to the unfair competitors claims, the plaintiffs are looking for injunctive reduction to bar PMC from persevering with its wrongful course of conduct,” together with asserting “possession in a protectable DIVINE-formative household of marks,” and enjoining it from “asserting or in any other case implementing PMC Blush and/or a DIVINE-formative household of marks in opposition to [them].” 

When it comes to the plaintiffs’ probability of success, they might have a powerful case for arguing that they need to be shielded from trademark legal responsibility for his or her use of the time period “Divine” in reference to the Rose, Inc.’s Blush Divine Radiant Cheek & Lip Shade on the premise that they don’t seem to be utilizing the time period to point supply however as an alternative, as a descriptive fashion title. 

Anastasia Beverly Hills prevailed in one thing of the same case involving fellow magnificence model Laborious Sweet. In a call in 2019, the U.S. Court docket of Appeals for the Eleventh Circuit decided that it had efficiently made a descriptive truthful use argument in reference to its use of “exhausting sweet,” arguing that it had not used the time period “exhausting sweet” in a trademark sense, however “in a descriptive sense as a result of ‘it was used to explain the sheen’ of the make-up shade that the time period labelled.” 

A rep for PMC didn’t instantly reply to a request for remark. 

The case is Amyris, Inc., et al. v. Pat McGrath Cosmetics, Inc., 3:22-cv-00567 (N.D. Cal.)

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