Celebrity influencer and model Hailey Bieber was recently sued for trademark infringement following the launch of her new skincare line, Rhode. While Rhode is Bieber’s middle name, it also happens to be the name of a popular fashion brand founded nine years ago by Purna Khatau and Phoebe Vickers, who aren’t happy with Bieber’s launch.
A Bumpy “Rhode” ahead
Khatau and Vickers allegedly came up with the idea for their fashion brand while traveling together in Goa, India. The friends and former college roommates decided over cocktails to put their years of fashion and advertising experience to good use and create Rhode, a brand inspired by vintage textiles and global influences, targeting “feminine, confident, and well-traveled women.”
The pair has been widely successful at cultivating a strong global brand, with 2021 sales surpassing $9 million and 2022 projected sales of $14.5 million. Khatau and Vickers describe Rhode as “a young and growing company [that] cannot overcome a celebrity with Hailey’s following using [their] company’s name to sell related products.” The fashion brand owns the “Rhode” trademark for several clothing items and accessories, and Bieber’s continued use of Rhode could potentially foreclose the brand’s ability to enter the skincare and beauty market.
Khatau and Vickers expressed that they did not want to file suit but felt it was necessary to protect their business. It is worth noting that Bieber allegedly attempted to buy the rights to Rhode four years ago, but Khatau and Vickers declined the offer. Thus, the duo filed a complaint in the United States District Court for the Southern District of New York against Bieber and her two companies on June 21, 2022, attempting to stop Bieber’s use of “Rhode.”
The fashion brand’s attorney argues, “[t]he magnitude of Bieber’s following and the virality of her marketing will cause immediate, ongoing and irreparable harm to the Rhode brand. And the hardships and public interest weigh overwhelmingly in favor of protecting the nine-year investment of two upstart entrepreneurs over the latest mega-venture by a mega-star.” She has reportedly referred to the lawsuit as “a textbook case of reverse confusion.”
What is Reverse Confusion?
Reverse confusion occurs when a larger, more powerful company—in this case, Bieber—uses the trademark of a smaller, less powerful senior owner—Rhode, the fashion brand—and thereby causes likely confusion as to the source of the senior owner’s goods or services. Although the later user may not be attempting to profit from the goodwill of the senior user, the public begins to see the senior owner’s goods as being connected to the later user. For example, the public might become confused and think Bieber is part of Rhode, the fashion brand that Khatau and Vickers built for years.
Reverse confusion can cause various forms of harm to the senior user. For example, the later user might appropriate the senior user’s reputation. They might limit the senior user’s expansion. The later user’s products may tarnish the image of the senior user’s products, and the senior user could lose patrons and clients. In addition, there’s a possibility that the public may mistakenly view the senior user as an infringer of the later user’s mark when the exact opposite is true.
If you think you might be a victim of reverse confusion, do not hesitate to contact us to schedule a consultation.