Mary Kay is taking on beauty chain Ulta, after filing a case in federal court last week for using its ‘LASH LOVE®’ trademark for the retail company’s own mascara products.
Mary Kay, which has grown into a $4 billion plus per year business, has sold mascara products using its federally registered LASH LOVE® branding since 2011, selling “over $120 million dollars of the popular LASH LOVE products” in that time.
Instead of merely using “Lash Love” in a descriptive capacity, Mary Kay claims that Ulta is using its “LASH LOVE® as a prominent designator" for Ulta’s kit of six mascaras, meaning that the retailer is using it in a source-identifying trademark capacity manner.
More than just adopting the trademark, Mary Kay argues that “the words LASH LOVE appear in bold capital letters on [the Ulta] box with pink trimming, a colour that has come to be associated with Mary Kay products, and that appears prominently on the packaging for Mary Kay products,” a further attempt to pass off its products as potentially associated with the beauty brand.
With such alleged infringement in mind, Mary Kay sent a cease and desist letter to Ulta’s general counsel on November 7, 2019, “demanding, among other things, that Ulta cease selling the infringing product, change the name of the listing of the infringing product on the Ulta website, and permanently cease using the LASH LOVE® mark or any confusingly similar marks in connection with cosmetics.”
While Ulta’s counsel did respond to the letter, Mary Kay claims it merely “stated that [Ulta was] reviewing Mary Kay’s letter [and] provided no other substantive response.” As of the time of filing this lawsuit, Ulta has “not provided any further response to Mary Kay’s letter,” per Mary Kay and “continues to sell the infringing product on the Ulta website and in [more than 1,100] retail stores around the country.”
In addition to a jury trial, Mary Kay is seeking injunctive relief to immediately and permanently prevent Ulta from using its LASH LOVE® mark, and monetary damages “in an amount to be determined at trial including, but not limited to, compensatory damages, statutory damages, treble damages, restitution, disgorgement of profits, punitive damages, exemplary damages, and pre- judgment and post-judgment interest as permitted by law.”
