Who Owns ‘Skin’? Kardashian’s ‘SKKN’ Facing Trademark Ambiguity

Kim Kardashian’s long-anticipated skin care line is set to launch Tuesday despite a mist of legal uncertainty surrounding her proposed “SKKN by Kim” trademark.

Intellectual property attorneys say the model and reality star’s business venture has stirred up a long-running debate over whether someone can own the rights to a common word like “skin,” and it’s dredged up accusations that the Kardashian family steals IP from women of color.

Kardashian filed 17 trademark applications between March and July 2021 for SKKN by Kim, a proposed brand that could fill an entire TJ Maxx store’s worth of products: cosmetics, face creams and serums, vitamins and supplements, home goods, linens, shower products, exercise mats, cell phone cases, and even wine cellars.

Just a couple days before her first applications were posted on the US Patent and Trademark Office’s website on March 30, 2021, Beauty Concepts LLC filed its own trademark application for its operating name, SKKN+. The company, based in the Brooklyn borough of New York City, said it’s used the mark since at least 2018 to offer salon services.

A few months later, in September, model Lori Harvey filed to protect her own planned skin care brand, SKN by LH, which launched in October.

Kardashian’s trademark applications spurred Beauty Concepts to oppose several of the registrations and send Kardashian’s team a cease-and-desist letter. The Trademark Trial and Appeal Board is now mediating negotiations between the dueling brands, and the board has suspended the consideration of all of Kardashian’s pending marks until the matter is concluded.

SKN by LH also filed documents indicating it might lodge oppositions at a later time, though the deadline for doing so passed in the spring.

Trademarking ‘Skin’

The way the TTAB resolves the SKKN+ challenge could affect a number of other pending trademark applications all covering variations of the word “skin.”

“It’s interesting that we’re seeing this battle over a word, skin—whether it’s SKKN or SKN—that is being applied for widely in connection with different beauty products,” said Shana Thomas, an IP attorney at LVLUP Legal, a firm that works with content creators. “How this ends up going will really pave the way for all these other applications.”

One of the main questions the TTAB must answer is whether the variations on “skin” merely describe skin care products and services, or whether the spellings add an element of distinctiveness that merits enhanced protection.

“Is the trademark distinctive enough to say that they should be the exclusive owners? That’s the really big issue here,” said Ticora Davis, an IP attorney who heads The Creators Law Firm.

The TTAB typically refuses to register marks that merely describe the product or service being offered—for example, “Creamy” to represent a yogurt brand or “New York’s Best Bagels” for a Brooklyn bakery. However, if a company can prove that the descriptive mark has a distinct product association—for example, adding “by Kim”—the board might be more likely to grant protection.

The brand could seek to “enhance their own rights in connection with Kim’s celebrity status,” according to Ivy McNeill, founding attorney at IP firm Canary and Hedge.

Kardashian’s attorneys have argued at the TTAB that Beauty Concepts shouldn’t have exclusive rights to the SKKN+ mark because of its descriptive nature, making room for Kardashian to also operate in the space. If Kardashian succeeds in registering her similar trademark, she could pave the way for Harvey to argue the same in her own pending trademark registration proceedings.

It’s still a risky strategy and could result in less protection for Kardashian’s branding.

“Skin is highly descriptive, even if you add another ‘k,’” Davis said. “If you have a highly descriptive trademark, many times they will not allow you to be the exclusive owner of that name.”

The board will also look at any overlapping product categories across the brands, analyzing whether consumers are likely to be confused by the similar branding and product verticals. Kardashian’s legal team argued that SKKN+’s rights “appear to be narrowly confined to skin facial services offered out of a single location in Brooklyn.”

Kardashian has already abandoned two trademark applications that would’ve covered salon services, the primary category in which SKKN+ operates.

Michelle Miller, who runs boutique IP practice the Brillionaires Law Firm, said that move could be seen as a gesture of good faith, putting Kardashian in a stronger position to coexist with the brand while also gaining her own registration.

Kardashian’s team is taking the position that “your prior use does not necessarily cover everything beauty, everything cosmetic,” Miller said. “I really believe Kim Kardashian’s legal team is onto something.”

Still, SKKN+ might find traction in its claims that it planned to expand into a line of skin care products and that Kardashian’s line could prevent that.

“In this case, I think the marks are very similar. The goods seem to be the same or closely related. When those two factors weigh in favor of infringement, then typically you have a pretty good case,” Michael T. Smith, an IP attorney at Birch, Stewart, Kolasch & Birch LLP, said.

While the ongoing TTAB proceedings won’t prevent Kardashian’s line from launching, SKKN+ could decide to request an injunction in federal district court to halt use of the mark. Though the TTAB can only grant trademark registration, a federal court action could allow the salon to halt Kardashian’s sales and obtain damages. But that’s an expensive and time-consuming effort, especially for a small business.

The more likely outcome, attorneys say, is that Kardashian could be pressured to strike a private agreement with Beauty Concepts, either licensing the brand rights to SKKN+ or signing a settlement check.

Appropriation Allegations

Additional public pressure to settle the dispute could come from social media conversations that have raised questions about whether Kardashian’s launch is the latest example of her family stealing concepts from small businesses and women of color.

Black women head up both SKKN+ and SKN by LH. Social media users pointed out that the SKKN by Kim brand name seemed suspiciously similar.

The 2019 launch of Kardashian’s shapewear was clouded by controversy over its original name, Kimono. The mayor of Kyoto, Japan, publicly argued it was a prime example of cultural appropriation, and the line was subsequently rebranded as Skims.

More recently, Kardashian’s younger sister Kendall Jenner faced claims that her 818 tequila brand infringed the trademark of Tequila 512, as well as backlash that she appropriated Mexican culture in marketing materials to sell her product. And in 2020, a Los Angeles designer—and Black woman—accused their sister Khloe Kardashian of buying and copying her business’ signature sparkly bodysuit.

In the case of SKKN by Kim, the trademark rights are murky, and it’s unclear whether Kardashian would’ve known about the SKKN+ salon before filing her trademark application. According to Davis, a negative public opinion of Kardashian’s launch might persist despite the outcome of the trademark proceedings.

“Some people might not feel like what Kim is doing is ethically right, but in terms of what’s legally right, she very well may be within her rights,” Davis said.

That increased social-media chatter around the launch could also push Kardashian into resolving the dispute with Beauty Concepts amicably, she said.

“I do think sometimes the court of social media is much swifter than the normal courts,” she said. “If these conversations get heated enough, it may cause Kim to say, ‘Hey, I’ll cut you guys a check.”

Attorneys for Kardashian, Beauty Concepts, and SKN by LH did not respond to requests for comment.


https://news.bloomberglaw.com/ip-law/who-owns-skin-kardashians-skkn-facing-trademark-ambiguity