Protecting Your Brand Requires Zealous Policing of Your Marks—Not Just Registration

Having a federally registered mark does not mean your brand is safe from potential infringers. Instead, protecting your brand requires zealous policing of your marks.  As an example, in September, a European cosmetics company, Kroma EU, filed a trademark infringement suit in Florida against the Kardashian sisters alleging they began marketing a competing makeup line, called Khroma, after Kroma EU and its founder, Lee Tillett, contacted Kim Kardashian to ask her to represent the line. Apparently, the Kardashians can get press for something other than their social life, fad diets or fashion choices.

The lawsuit alleges the Kardashians intentionally started their Khroma line shortly after Kroma EU had sent Kim Kardashian samples and asked if she wanted to represent the Kroma brand. Kroma EU claims that the Kardashians’ infringement has caused major instances of consumer confusion that severely impact its business.  Kroma EU also names its founder, Lee Tillett, in the lawsuit, accusing him of abandoning the European arm of the company after winning an injunction temporarily barring the use of the name Khroma in California in March 2013.

In the 2013 lawsuit, U.S. District Judge Audrey Collins for the Central District of California found that the similarity of the two names would likely cause confusion among customers. She explained that the words sound identical despite the variation in spelling and that they would appear nearly identical to consumers. Ironically, Tillett and the Kardashians settled the California lawsuit in April of this year after the court tentatively denied the Kardashians’ motion for summary judgment.

Per the current suit, it now appears Tillett has teamed up with the Kardashians. Notably, Kroma EU, the legal owner of the Kroma trademark, was not a party to the 2013 lawsuit nor a party to the resulting settlement. This recent action was filed because Kroma EU believes its assistance with the settlement of the 2013 Lawsuit was a scheme intended to lull Kroma EU into proving evidence for litigation and damage models.

Take Away… As the owner of a trademark, it is your obligation to protect the mark and police any infringing use. Thus, when seeking representatives to endorse your products, make sure to document all correspondence. Any initial correspondence should notify the potential representatives that you have a federally registered trademark and that use of any similar mark would constitute trademark infringement. Before sending any product samples, you should obtain documentation from the potential representative that acknowledges your trademark or patent rights and agrees not to infringe upon your intellectual property. Moreover, any exchange of proprietary information, even if in the context of settlement, should only be produced subject to a protective order or confidentiality agreement.

For more information, the case is Kroma Makeup EU LLC v. Boldface Licensing & Branding Inc. et al., case number 6:14-cv-1551, in the U.S. District Court for the Middle District of Florida.

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