Long “Rhode” Ahead, Hailey Bieber

Long “Rhode” Ahead, Hailey Bieber

Ariel Goldberg is an incoming 1L JD candidate at Osgoode Hall Law School.

While Hailey Bieber’s new skin care brand Rhode promises “happy and hydrated skin,” the brand itself has a blemish: an alleged trademark infringement. On June 21,2022, Rhode-NYC, LLC. (“Rhode-NYC”) filed a complaint in the U. S. District Court for the Southern District of New York against Hailey Bieber and her companies RHODEDEODATO CORP. and HRBEAUTY, LLC for trademark infringement. Rhode-NYC is a fashion brand founded by two women entrepreneurs Purna Khatau and Phoebe Vickers in 2014, whereas Hailey Bieber’s Rhode skin launched in June 2022 during an era of celebrity brands.

Rhode-NYC argues that Hailey Bieber’s use of her middle name “Rhode” as the name of her skin care brand is creating market confusion and potential harm to its goodwill and reputation.  Rhode-NYC claims that search engine results for “rhode” were immediately populated by Hailey Bieber and her companies’ brand as evidence of source confusion. Further, consumers are tagging the wrong Rhode brand on Instagram content. This is a case of reverse confusion where the junior user of a similar mark, usually with more resources, creates confusion that a senior’s goods and services originate from the junior user. Hailey Bieber leveraged her fame and social media following, and that of her husband Justin Bieber’, to immediately establish her brand.

Hailey Bieber and her companies’ trademark applications’ history suggests an awareness of Rhode-NYC’s prior trademark rights and the brand confusion that would result from the existence of both brands. In November 2018, Hailey Bieber and her companies attempted to purchase the RHODE mark from Rhode-NYC after filing an application with the US Patent and Trademark Office (“USPTO”) for the use of “Rhode” on clothing. Then, in December 2020, Hailey Bieber and her companies filed an intent-to-use trademark application for RHODE as a word mark and stylized word depiction for use in skin care. Notably, Rhode-NYC did not oppose the 2020 application.

While the two brands registered the RHODE mark for different uses under the Nice Classification system, Rhode-NYC argues that expansion of either brand increases the potential for harm because the uses are in adjacent industries.  Already, Hailey Bieber and her companies are filing trademark applications outside cosmetics and promising Rhode clothing. Following the trend of celebrity brands, Hailey Bieber’s Rhode is unlikely to remain in the realm of skin care. For example, the beauty brand Glossier developed the line “GlossiWEAR” which includes apparel and accessories such as a hoodie. In addition, Rhode-NYC claims that Hailey Bieber and her companies’ use of the RHODE mark prevents Rhode-NYC’s own intentions to enter the beauty and lifestyle market.

The lawsuit over the RHODE mark demonstrates the trademark implications of the rise of celebrity brands. Specifically, how celebrities’ existing fame impacts secondary meaning and the importance of considering trademark rights in industries that would be a natural extension of a brand. Ultimately, Rhode-NYC co-founders are only attempting to protect their brand, not to harm Hailey Bieber. They explained in an Instagram statement, “We don’t want to sue Hailey; we want to celebrate her. As fellow women entrepreneurs, we wish her every success. Hailey could choose any brand for her skin-care line. We have only the brand name “RHODE” that we’ve built.”.