The Kardashians are involved in a trademark dispute that may be decided by the US Supreme Court. Kroma Makeup EU, LLC (“Kroma EU”) sued the Kardashians in 2014 over the Kardashians beauty products line, “Khroma Beauty”. Kroma EU was granted a license in October 2012 to import, sell and distribute “Kroma” branded beauty products in Europe by the US trademark owner. The trademark owner settled a separate suit against the Kardashians based upon the Kardashians use of “Khroma” in the US. Kroma EU subsequently sued in the Middle District of Florida over the Kardashian’s use of “Khroma” in Europe.
The Kardashians were successful at the District Court level and then on appeal at the 11th Circuit Court of Appeals. The decision was not based upon a likelihood of confusion between “Kroma” and “Khroma” but whether or not Kroma EU had standing to even file suit against the Kardashians because Kroma EU was not the owner of the trademark but merely a licensee. The 11th Circuit agreed with the District Court’s holding that Kroma EU lacked standing to file suit because “a licensee must have contractual – in addition to statutory – standing.” The problem, as Kroma EU frames it, is that the 11th Circuit applied a much more restrictive standard than any other circuit court.
The First, Fifth, Seventh and Ninth Circuits allows any party with “a reasonable interest to be protected against infringement” to file suit for trademark infringement. The Fourth Circuit allows any party to file suit, “who can prove an injury to a commercial interest in sales or business reputation proximately caused by the defendant’s misrepresentations.” In contrast, the 11th Circuit only looks to the language of the license agreement to determine if the licensor authorized the licensee to bring suit against infringers. Kroma EU is requesting the US Supreme Court settle the split among the Circuit Courts.
Please feel free to contact me to discuss the language of your trademark license or litigation questions concerning this issue.