In a recent ruling in a trademark infringement case – between Petunia Products (Petunia) v. Rodan & Fields (R+F) & Molly Sims (model/influencer), a California judge denied Sims’s request to dismiss trademark infringement claims against her. It’s a ruling that every influencer should be aware of.
Issue:
Petunia owns the trademark BROW BOOST and sells an eyebrow product under that name.
Competitor R+F develops a similar product called BROW DEFINING BOOST (confusingly similar to Petunia’s trademark name) and uses Google AdWords service to bid on search terms that use “Brow Boost” resulting in a diversion of customers searching for Petunia’s BROW BOOST. (I hope you’re keeping up so far).
Enter Molly Sims who published a sponsored post on her blog to promote R+F’s BROW DEFINING BOOST using the hashtag #BROWBOOST.
Sims’s basic argument:
Leave me out of this, I am an innocent third party. Besides, what happened to protected free speech, can’t I have an opinion on a product? If you hold me responsible, we might as well throw the First Amendment out the window and suppress all “legitimate commentary” on anything.
The Judge’s Position:
Umm, yeah. Not so fast there. I hear you fast talking about constitutional rights but guess what…you swam to the deep end. Your post was not protected consumer commentary, it was commercial. BIG DIFFERENCE. 😉 Had this not been a sponsored post, a paid advertisement for the purpose of influencing sales of this product, you’d still be safe in shallow waters.
You see, trademark law says, to succeed on a trademark infringement claim, the injured party must show that the accused infringer used the trademark in commerce and that the use was likely to confuse customers as to the source of the product. Using the mark in connection with the sale, distribution or advertising of goods and services is a use in commerce. You didn’t even need to tell us it was an advertisement. The link to the sales page of the product was all we needed. So, Ms. Sims, you’re still in the mix.
The Takeaway:
There’s still a few rounds to go before this case is decided. All we know for now, and what every influencer should know is that in cases where you use a trademark for commercial purposes, you will not be treated as an innocent third party if there are any trademark infringement liability issues.
It’s nice to make 6 figures and all with your influencer hustle but with $$$$$$ bank cha-chings come $$$$$$ problems. When the sponsorships and partners start rolling in, don’t skimp on the legal fees. You need a trademark lawyer to look at the fine details of your influencer business and influencer deals.
So what do you think? The main trademark question – the similarity of the marks and the likelihood of confusion. Would you raise an eyebrow if you were searching for BROW BOOST and you came across BROW DEFINING BOOST in the makeup section of your favourite department store? 🤔
#trademark #trademarkinfringement #intellectualproperty #influencer #marketing
