On the Rhode to Litigation: The Hailey Bieber Trademark Dispute Explained

On the Rhode to Litigation: The Hailey Bieber Trademark Dispute Explained

On June 15, 2022, Hailey Rhode Bieber launched her highly anticipated skincare line Rhode.^[1] Bieber has described her brand as sustainable, affordable, and intentional skincare that “nourishes your skin barrier over time.”^[2]

Despite the early success of Rhode, behind the scenes, Bieber has faced a lengthy legal battle over the brand’s name.^[3] In 2018, Bieber attempted to purchase the trademark registration for “Rhode” from LA fashion label Rhode but the fashion label’s founders, Purna Khatau and Phoebe Vickers, declined to sell.^[4] Shortly afterwards, Bieber proceeded to seek trademark registration for Rhode regardless and, subsequently, Khatau and Vickers sued for infringement.^[5]

The complaint alleges that, given Bieber’s influencer status and massive following, Rhode skincare “will quickly swamp [the fashion label’s] market presence, confuse the marketplace, and ultimately destroy the goodwill and reputation of the Rhode brand.”^[6] In its initial proceedings, the US District Court for the Southern District of New York denied the fashion label’s motion to preliminarily enjoin Bieber’s new business and also declined to block the release of her YouTube documentary, “The Making of Rhode,” which tells the story of how the brand came to be.^[7] Nonetheless, the fashion label plans to continue its fight against Bieber and remains confident that it will see a win at trial.^[8]

What is Trademark Infringement?

To understand trademark infringement, it is first important to understand what a trademark is.^[9] A trademark is any word, phrase, design, or symbol that allows consumers to identify a brand in the marketplace.^[10] In essence, a trademark is a source indicator for brands.^[11] While registering your trademark is not mandatory, registration provides a wider range of nationwide rights and protections.^[12] Comparatively, unregistered marks only have protections that extend to the geographic area that you are selling in.^[13]

Relatedly, trademark infringement is the “unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.”^[14] Thus, the primary question that needs to be asked in relation to the Rhode case, is whether or not Bieber’s Rhode has led to brand confusion amongst consumers of the fashion label.^[15]

While courts vary in their “confusingly similar” analysis, the most frequently applied is the 13 “DuPont factors” test. ^[16] Notably, no single factor is dispositive; rather, the factors must be weighed in conjunction.^[17] The Second Circuit, which includes New York, has adopted a variation of this test using seven factors from Polaroid Corp. v. Polarad Electronics Corp.^[18] These factors include:

(1) the strength of the plaintiff’s mark; (2) the similarity of plaintiff’s and defendant’s marks; (3) the competitive proximity of the products; (4) the likelihood that plaintiff will “bridge the gap” and offer a product like defendant’s; (5) actual confusion between products; (6) good faith on the defendant’s part; (7) the quality of defendant’s product; and (8) the sophistication of buyers.^[19]

What’s Next for Rhode?

It does not seem like Khatau and Vickers intend to back down from this fight, so, assuming the suit survives future motions and the parties refrain from settling, trial is in Rhode’s future.^[20] So, who is most likely to win at trial? This depends on whether the court finds the trademarks to be used in a way which is confusingly similar. For one, it is easy to say that the marks are similar, both being “Rhode.” Further, Bieber’s prior knowledge of the fashion label may not work in her favor when it comes to proving she acted in good faith.^[21] On the other hand, arguments could be made for either side that the brands operate in the same competitive market. At the end of the day, clothing and skincare are pretty distinguishable, even if they are in the same realm of goods. Ultimately, the case may come down to a showing of actual market confusion, which is more difficult to predict. While there is no saying what the outcome will actually be, it will certainly be an interesting case to follow.