Mary Kay accused Ulta of infringing on its “Lash Love” trademark to sell mascara, Mary Kay said in a Nov. 19 complaint in Dallas federal court. Mary Kay registered the “Lash Love” trademark for cosmetics in 2011, selling over $120 million in Lash Love products since, including mascara.
Ulta is using the same phrase as a prominent designator for a kit of six mascaras, which Mary Kay claims infringes on their trademark. “In fact, the words Lash Love appear in bold capital letters on a box with pink trimming, a color that has come to be associated with Mary Kay products, and that appears prominently on the packaging for Mary Kay products,” the cosmetics company said, according to Law 360.
“Given that the Infringing Product is a mascara kit—a type of good within the class of goods covered by Mary Kay’s trademark registration, and the same type of good that Mary Kay sells under its mark—consumers are likely to be confused and wrongly believe that the infringing product or mascara tubes packaged within the infringing product were manufactured by Mary Kay or are in some way sponsored, endorsed, approved by, affiliated, connected, or otherwise associated with Mary Kay,” the company continued.
The complaint states Mary Kay sent a cease-and-desist letter to Ulta on Nov. 7, and Ulta is said to be reviewing the letter, but “as of the time of filing, defendants have not provided any further response to Mary Kay’s letter.”
The product in question has been removed from the Ulta website. Mary Kay is seeking unspecified damages, restitution, disgorgement of profits, court costs, and attorney fees. It’s also seeking a permanent injunction blocking Ulta from selling the products, according to the complaint.
The trademark-in-suit is U.S. Trademark No. 4,060,477. The case is Mary Kay Inc. v. Ulta Beauty Inc. et al., case number 3:19-cv-02764, in the U.S. District Court for the Northern District of Texas.
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