A legal battle has emerged in the beauty industry, as Aramara Beauty LLC, the company behind the popular skincare brand Glow Recipe, wages a trademark lawsuit against Ljulja Beauty Inc., known as Makeup By Mario. According to the complaint that it filed in the U.S. District Court for the Southern District of New York on March 6, Glow Recipe claims that Makeup By Mario – whose founder, Mario Dedivanovic, rose to mega-fame thanks to his work with Kim Kardashian – is making unauthorized use of its registered “Watermelon Glow” trademark in connection with his own beauty offerings.
Setting the stage in its complaint, Glow Recipe states that it is a renowned skincare brand that, since its start in 2014, has become widely recognized for its innovative, fruit-based skincare formulations. One of its most successful product lines, “Watermelon Glow,” features a variety of cosmetics and skincare items that incorporate watermelon as a key ingredient. According to the complaint, Glow Recipe has invested upwards of $56 million in marketing and branding efforts to establish the “Watermelon Glow” name as a distinctive indicator of source in the beauty industry.
The New York-headquartered beauty co. points to a number of trademark registrations for the “Watermelon Glow” name for use on cosmetics arguing that more than one of these trademarks have been officially recognized as incontestable under U.S. trademark law, solidifying its exclusive rights in the branding.
Fast forward to August 2024, and Glow Recipe alleges that Makeup By Mario launched a lip serum under the name “Watermelon Glow.” Makeup By Mario’s goods are “directly adjacent and/or identical to products sold by Glow Recipe,” and Makeup By Mario “distributes, markets, advertises, promotes, and sells its cosmetics products to the same customers that are also Glow Recipe’s customers, and through the same channels of trade as Glow Recipe,” the company claims. As a result, the complaint states that the allegedly infringing goods are likely to cause consumer confusion and mislead the public into believing that the Makeup By Mario products are affiliated with or endorsed by Glow Recipe.
Glow Recipe further asserts that Makeup By Mario’s actions constitute willful trademark infringement, unfair competition, and deceptive business practices under both federal and New York state laws, as despite being put on notice of its infringement, Makeup By Mario has refused to cease using the disputed name and has continued to use the mark through the date it filed suit.
With the foregoing in mind, Glow Recipe is seeking injunctive relief to permanently prevent Makeup By Mario from using the “Watermelon Glow” mark on its products, as well as monetary damages, including profits derived from the allegedly infringing sales.
The Counterpoint: The case is unlikely to be an open-and-shut win for Glow Recipe given that Makeup by Mario is using the “Watermelon Glow” mark as a style name alongside other similar names, such as Strawberry Glow, Tangerine Glow, Cherry Glow, etc., and arguably not as an indicator of the source of the products at play. Some styles names are, in fact, treated by the companies using them as trademarks; for example, the Birkin and Kelly names come to mind for use in connection with handbags. However, this is far less common in the beauty/cosmetics industry, in which there are often many style/shade names for each individual product and that does not appear to be what is going on here.
Courts have routinely held that style names when used as style names (more about that here) do not infringe others’ trademarks. It likely helps that Makeup By Mario’s use of the term “Watermelon Glow” is being used to identify or describe one shade of a larger collection of its “MoistureGlow™ Plumping Lip Serums” (Note: The TM designation there is courtesy of the brand.) Another factor may weigh in MArkeup by Mario’s favor: despite filing a slew of trademark applications for registration for many of the trademarks associated with its brand, Watermelon Glow is not among those marks.
The case is Aramara Beauty LLC d/b/a Glow Recipe v. Ljulja Beauty Inc. d/b/a Makeup by Mario, 1:25-cv-01885 (SDNY).
Share
