Boldface began the nationwide rollout of a cosmetics line underthe mark KHROMA BEAUTY BY KOURTNEY, KIM AND KHLOE (the celebrity Kardashiansisters). Tillett sought to enjoin theuse of the mark because of its registered KROMA mark for cosmetics, andprovided evidence of confusion (or at least evidence of uncertainty—Tillettsolicited these statements, but the court accepted them as evidence of likelyconfusion). The court granted aninjunction; I’ll leave aside most of the likelihood of success analysis becauseI think the most interesting parts of the opinion discuss injunctive relief.
The court explained that it was well aware that granting aninjunction mid-rollout could cause millions of dollars in losses. But it was also convinced that withholding aninjunction would destroy Tillett’s business, about which Boldface knew beforeit began the rollout, through reverse confusion. Because Tillett’s rights weresuperior, the balance of hardships favored Tillett.
According to the court, “Boldface moved forward with itsmulti-million-dollar product rollout using a trademark it knew was similar toTillett’s registered mark based upon the thinnest of reeds: as few as 13 daysof silence from Tillett after receipt of Boldface’s July 18 email.” It admittedthat it could have changed the KHROMA BEAUTY marks then without serious harm,but forced ahead even when the PTO agreed, by refusing to register KHROMABEAUTY, that the marks were too similar. Boldface thus brought the injury on itself.
Boldface then argued that Dawn Donut should limit the scope of the injunction to markets inwhich Tillett presently does business. But DawnDonut only applies when the junior and senior user are in geographicallyseparate areas, with no present likelihood that the federal registrant wouldexpand into the junior user’s market. Here, Tillett sold cosmetics online and across the country, had promotedthem in nationwide media, and had explored a deal with a UK retailer in thehope of using that deal to get further US retail deals. This demonstrated a present likelihood ofexpansion into areas occupied by Boldface.
“Perhaps more important,” applying Dawn Donut to this reverse confusion case would do significant harmto Tillett’s nationwide rights arising from its federal registration. DawnDonut makes sense in forward confusion cases, but not with a nationwidejunior user who will cause the senior user to lose the value of its mark andcontrol over its reputation. If thejunior user was free to occupy the entire rest of the country, that presence “couldbe significant enough to eliminate the registrant’s identity, goodwill, andreputation even in those areas the registrant occupies,” and even if theregistrant persisted, it would have no incentive to expand into territoriesalready occupied by the junior user. While it would be entitled to aninjunction on entry into each market, “it would likely have to expendsignificant time and money to dispel the confusion created by the junior user’sprior presence. And by that point, itmay be too late.” Preventing reverseconfusion by a nationwide junior user required a nationwide injunction.
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