RHODE NYC, LLC V. RHODE SKINCARE
Plaintiff: Rhode NYC
Defendant: Rhode Skincare
Rhode NYC, a clothing brand established in 2014, held trademarks for the Rhode name regarding clothing and accessories.
Hailey Rhode Bieber, established Rhode Skincare in 2022.
Rhode NYC filed for trademark infringement in 2022, against Bieber’s brand, and claimed that it caused confusion and threatened their market presence. The clothing brand also requested a preliminary injunction.
Rhode NYC
Rhode NYC is a luxury clothing brand, founded in New York City in 2014, by co-founders Purna Khatau and Phoebe Vickers. The brand focuses on timeless pieces that draw inspiration from vintage prints and cultural influences.
Within the authenticity of their brand, they hold their brand title, Rhode, very sacred. The founders curated this name based on a sea nymph in Greek Mythology. They have accounts with retailers such as Bergdorf Goodman, Saks Fifth Avenue, and Neiman Marcus.
Rhode Skincare
Model and celebrity, Hailey Rhode Bieber, launched Rhode Skincare in 2022. Since then, the brand has skyrocketed due to marketing strategy and the influence Hailey has on the beauty industry.
With millions in her fan base, and strategic media initiative, Rhode is a global, leading beauty brand today.
Trademark
Due to the fact that Rhode NYC owned trademarks in clothing and accessories, Bieber’s different use of the name was legal. However, Rhode NYC claimed that they had plans of expanding into the beauty sector.
To this, Bieber’s legal team filed cancellation proceedings that opposed Rhode NYC’s registrations. This proved that the clothing brand was not utilizing the name for several goods in which Rhode Skincare was.
Celebrity Influence
Hailey Bieber’s status is a driver in not only the success of her brand, but in this trademark case as well. Due to the brand’s contributions to the market, it would be difficult for the court to rule against the brand.
This is where complexities of trademark disputes come into play, as success in the fashion and beauty industry can be a result of brand/name recognition.
Especially as Rhode Skincare is named after Bieber, and her mother, it is easily identified by consumers.
Legal Technicalities
A motivator in the pursuit of these claims by Rhode NYC involved the unfair competition that Rhode Skincare would bring about. Unfair market competition is a claim covered under the Lanham Act.
The case also utilized New York State Law, in addition to federal law. These state laws regulate unfair market competition as well.
The case also briefly touched on the principles of:
Prior Use: Represented through Rhode NYC providing proof of previous brand name utilization
Reverse Confusion: Regards a larger junior user (in this case Rhode Skincare), intimidating or overshadowing a smaller senior user (Rhode NYC).
The Results
Rhode NYC’s request for a preliminary injunction was denied by the courts, and the courts allowed Hailey to continue promoting Rhode Skincare via social media. During this time, Hailey even released “The Making of Rhode” video, which caught the attention of many, and definitely spread the brand’s name.
After approximately two years on this case, there was a settlement reached in July 2024. The details of the settlement remain confidential, as public details state that a “co-existence agreement” was achieved.
What does this case say about not only the influence that celebrities have in the beauty and fashion industry, but the legal influence they have as well?
