Boldface Group, Inc. (Boldface), which sells the makeup line Khroma Beauty by Kourtney, Kim and Khloe Kardashian, is currently involved in two federal trademark infringement lawsuits before the US District Court for the Central District of California. On November 19, 2012, Chroma Makeup Studio LLC (Chroma) sued Boldface for trademark infringement based on its CHROMA mark. Shortly thereafter, on November 30, 2012, Boldface filed an action for declaratory judgment in response to a cease and desist letter from By Lee Tillet, Inc. (Tillet) which claims rights in the mark KROMA.

Boldface is a “beauty license company” that partners with celebrities to launch makeup and beauty lines. In the fall of 2012, Boldface entered into its first license with the Kardashians to launch Khroma Beauty. The makeup line includes a variety of cosmetics and is available through several retail outlets. The company currently owns two pending federal trademark applications for the marks KHROMA BEAUTY BY KOURTNEY, KIM AND KHLOE and KARDASHIAN KHROMA.

According to its complaint, since 2000, Chroma has been providing custom makeup and beauty services in Beverly Hills, California. The company has used the marks CHROMA, CHROMA MAKEUP STUDIO and CHROMA COLOUR to sell cosmetics, beauty products and accessories to customers nationwide through its store, other retail locations in Los Angeles and its website. Upon learning about plans for the Khroma line through an episode of Keeping Up with the Kardashians, Chroma sent Boldface a cease and desist letter regarding its use of the KHROMA mark, and alleges that clients, employees and potential licensing partners had inquired whether Chroma had partnered with the Kardashians. Relying on its reputation and apparent confusion in the marketplace, Chroma filed suit arguing that Boldface’s Khroma Beauty line clearly infringes the CHROMA trademark. Chroma has requested an injunction as well as damages and attorney’s fees.

Chroma, however, is not the only company claiming that Boldface has committed trademark infringement. Tillet is a cosmetics company selling KROMA custom and off the shelf makeup designed by Lee Tillet, a makeup artist in Altamonte Springs, Florida. Tillet owns US Registration No. 4,079,066 for the KROMA mark. On June 28, 2012, Tillet sent Boldface a cease and desist letter claiming that Boldface’s Khroma Beauty line amounted to trademark infringement. Boldface responded denying Tillet’s claims, and despite several exchanges between counsel, the parties were not able to settle the dispute. Boldface then filed an action for declaratory judgment asserting that the prominent use of the famous Kardashian names on packaging for the Khroma Beauty line and Tillet’s use of “By Lee Tillet” on its packaging is sufficient to preclude trademark infringement.

This case highlights two important issues in trademark practice. First, and while it is unclear what steps Boldface took in selecting the KHROMA mark, conducting trademark clearance searches prior to adopting a mark can help to identify potentially conflicting marks, assess risks and develop a branding strategy. Second, while sending cease and desist letters should be part of an effective enforcement strategy, that strategy must consider the possibility of litigation because companies are often prepared to file actions for declaratory judgment in response to such letters. Arent Fox is continuing to monitor these cases and other cases involving the fashion industry and trademark infringement. Please contact Anthony V. Lupo, Sarah L. Bruno or Luna M. Samman with questions.