Empress Hair Care Products has filed a lawsuit against Sean Combs alleging trademark infringement and unfair competition. According to the lawsuit, filed on January 10, 2012, Combs infringed the “Empress” trademark when he used the name for his new women’s fragrance line. AllHipHop.com reports that according to Empress Hair Care Products, Sean Combs tried to file a trademark for the name “Empress” while knowing that Empress Hair Care Products owned the trademark. The application was rejected and Empress Hair Care Products claims that in February 2010, attorneys from Combs’ Sean John Clothing Company contacted Empress Hair Care Products to obtain permission to use the “Empress” mark in exchange for compensation. Empress Hair Care Products did not enter into an agreement with Sean John nor grant Sean John the right to use the mark. Combs’ proceeded to file a second application to trademark the name “Empress Sean John” but it was also rejected. Finally, Combs’ decided to launch his Sean John Empress perfume in summer 2011.
Under the Lanham Act, the test for trademark infringement is the “likelihood of confusion” among consumers about the origin of the goods or services. 15 U.S.C. §§ 1051–1127. The plaintiff has the burden to first show that it has a protectable trademark right in the mark at issue, and that the defendant is using that mark or a confusingly similar mark in such a way that it will create consumer confusion, mistake, or deception. Consumer confusion can occur when both parties sell similar products, or when it appears that one party is somehow associated, affiliated, or connected with the other party’s products. Here, Empress Hair Care Products holds a trademark right to the name “Empress,” and alleges that Comb’s use of this mark on its products will create consumer confusion as both companies target the same consumers. Empress Hair Care Products sells hair products for African American women, while Sean John’s Empress Perfume and Lotion line will sell perfume and lotion products to women, including African American women.
Courts will analyze an eight-factor test to determine the likelihood of confusion. Polaroid Corp. v. Polarad Elec. Corp., 287 F. 2d 492, 495 (2d Cir. 1961). The eight factors are: (1) strength of the plaintiff’s mark, (2) similarity between the two marks (including the marks’ look, phonetic similarities, and underlying meanings), (3) competitive proximity of the product, (4) the likelihood of expansion of the product lines, (5) evidence of actual confusion by consumers, (6) defendant’s bad faith, (7) the quality of defendant’s product, and (8) sophistication of the relevant group. There is no exact formula to determine whether an infringement as occurred, as Courts give different weight to each of the factors. For instance, both parties can have the same mark in the same geographic area without trademark infringement occurring, so long as the goods or services of the parties are sufficiently dissimilar. Here, both products are dissimilar in that Empress Hair Care sells hair products and Sean John is currently selling perfume. However, both products are still in the same cosmetics & beauty industry and may not be sufficiently dissimilar to allow the defendant to continue using the name “Empress.” In addition, the products are so closely connected in the cosmetics & beauty industry that a likelihood of expansion of the product lines may exist.
A defendant in a trademark infringement claim can assert two affirmative defenses: fair use or parody. A fair use defense can be used when a descriptive mark is used, in good faith, for its primary meaning, and no consumer confusion is likely to result. According to the Merriam- Webster Dictionary, the term “Empress” is defined as “the wife or widow of an emperor,” or “a woman who is the sovereign or supreme monarch of an empire.” Here, the mark “Empress” is not used as a descriptive mark as it does not describe the product. Parody occurs when the defendant uses the plaintiff’s mark or a similar mark with deliberate exaggeration for comic effect or ridicule. This defense does not apply here either. Sean John’s only defense would be to argue that both products are not in the same market, that there will be no consumer confusion, and that there is no likelihood of expansion for either party. Empress Hair Care will be successful in its claim against Sean John if it can show Sean John infringed on its trademark and that the likelihood of consumer confusion exists.