Everyone knows who Justin Bieber is, and his wife, Hailey Bieber, is a major social media personality as well. Recently, Hailey generated a good amount of buzz by announcing the rollout of her new skin care line, which uses the name “rhode.” The celebrity couple leveraged their enormous social media presence to promote the products, bringing a combined 288 million Instagram followers to the effort.
But not everyone is thrilled about Hailey’s new product line. In late June of this year, a New York clothing company–also called “RHODE”–filed a lawsuit in federal court claiming that Hailey’s use of the name constituted an infringement of their earlier-established trademark use of it. In its complaint, the plaintiff fashion company tells a sympathetic story:
It’s hard to build a brand from scratch, especially in the fashion industry. It was for Plaintiffs and co-founders Purna Khatau and Phoebe Vickers. When they conceived of Rhode in 2013, they had no name recognition, no connections, and no following. But the former college roommates did share a passion for travel and a nagging awareness of a gap in their wardrobes— and maybe a gap in the marketplace, too. So, they started a women’s clothing company, launching a line of easy-but-sophisticated travel wear. They devoted themselves to building and promoting the RHODE brand, honing their aesthetic, expanding their product lines, and doggedly working to get the brand featured on fashion blogs and offered in stores. Nine years later, their RHODE-branded products have been featured in magazines like Vogue, carried in stores like Saks Fifth Avenue, and worn by celebrities and fashion influencers. Rhode is a quintessential modern success story—two women entrepreneurs, uniting diverse cultural backgrounds and shared taste to make products people love.
Plaintiff indicates that its efforts have yielded a good measure of success; the company’s first-year sales were less than $100,000. But its projected sales for 2022 are $14.5 million—growth of over 14,500%.
According to the plaintiff, however, Hailey’s use of the same brand name threatens this hard-earned success:
Without the law’s intervention, there is no suspense in how these colliding stories end: The RHODE brand [plaintiff] built gets swamped, washed under by a famous superstar who does not much care that the name she prefers for her beauty products is already being used by two other women entrepreneurs. Bieber’s “rhode”-branded products will first saturate the beauty market that overlaps with the women’s clothing and lifestyle market in which Rhode operates. Bieber has indicated that “rhode”-branded clothing is next, and her fans are already talking about it on social media. Bieber’s immense name recognition, media presence, and following will overwhelm the goodwill and reputation Rhode’s founders worked so hard to generate.
The plaintiff brings claims against Hailey and her company for trademark infringement under the federal Lanham Act and New York common law. To prevail, plaintiff must prove that it owns a valid “Rhode” trademark, and that Hailey’s use of the same word for her products “is likely to cause consumers confusion as to the origin or sponsorship of the defendant’s goods.”
Hailey has already notched an early victory in the case. The Plaintiff requested the court immediately issue an injunction—a powerful court order requiring the subject person or entity to refrain from engaging in certain conduct—prohibiting Hailey from using the name “rhode” with her product line. Hailey opposed that request, on the basis that “rhode” is a family name passed down from her grandmother, and that she and the plaintiff had previously worked out an arrangement whereby Hailey would not use the “rhode” name in connection with clothing, but only skin care products, thus eliminating any product confusion in the eyes of the public. The judge denied plaintiff’s request for the injunction on Friday.