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Two cosmetics giants sparring over "LASH LOVE"

News and Notes Focused on the 3 Public Faces of IP Law

  • Brand Image Protection - Trademark Law
  • Visual Image Protection - Copyright Law
  • Personal Image Protection - Right of Publicity Law

The Image Protection Law blog has been created in order to share stories and information on the legal aspects of: 1) the marketplace reputation of a company or product captured in its trademark, 2) published or publicly-displayed artwork, photography, and any created visual design, and 3) use of a person's photograph or likeness for product promotion or other commercial purposes.

The "IP3" share at least one thing in common: Image is everything. In these posts let's look at what that means in the realm of intellectual property in the news, but let's also be prepared to explore if there's something more beyond "everything." Don't forget, the intellectual in "intellectual property" doesn't mean smart or brainy, although by nature true creators often are. The word is used to refer to any creation, i.e., a "product of the mind." While this blog will be regularly updated, you are encouraged to share your thoughts on these posts.

When you walk through a cosmetics store, the sheer number of brands and variations on packaging can be overwhelming. Translate that into the volume of intellectual property that brand owners must protect in the marketplace and there are certainly going to be disputes.

In November, Mary Kay, the cosmetics company known for its use of individual consultant-marketers, filed a trademark infringement lawsuit against Ulta over the mark "LASH LOVE" in U.S. District Court for the Northern District of Texas.

According to The Fashion Law, the suit alleges that Mary Kay has sold mascara under this brand since it registered the trademark in 2011 and that Ulta began to use it for mascara using "Lash Love." Mary Kay also argues that the use of "LASH LOVE" on a pink box is further evidence of an effort to pass off the mascara as coming from Mary Kay, not Ulta, because pink is Mary Kay's signature color.

After allegedly receiving no substantive response to a cease-and-desist letter requesting that Ulta stop using the mark, Mary Kay filed suit. The plaintiff argued that the failure to respond (other than just an acknowledgment) shows conduct that is "knowing, intentional, willful, malicious, and wanton ... caus[ing] irreparable harm to Mary Kay's reputation, goodwill, business relationships, intellectual property, and brand integrity."

Mary Kay is asking for a court order (injunction) that Ulta stop using the mark and for money damages, including punitive damages, which are meant to punish a wrongdoer and act as a deterrent to others that might engage in similar conduct.

This lawsuit is being discussed in the media. We will report back on further developments.

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