Lovely Skin, Inc. v. Ishtar Skin Care Products, LLC
745 F.3d 877
8th Cir.2014Background
- Lovely Skin sued Ishtar for trademark infringement, false designation of origin, unfair competition, and injury to business reputation under Nebraska law.
- Ishtar counterclaimed to cancel Lovely Skin’s two registrations (LOVELYSKIN and LOVELYSKIN.COM) under 15 U.S.C. §§ 1064 and 1119.
- Trial court canceled Lovely Skin’s registrations, ruling they lacked acquired distinctiveness at registration and entered judgment for Ishtar on all claims.
- Lovely Skin relies on substantial advertising and revenue growth to prove acquired distinctiveness; Ishtar relies on third-party marks and application testimony to show lack of acquired distinctiveness.
- The district court also held no likelihood of confusion between Lovely Skin’s marks and livelyskin.com; the bench trial proceeded on the infringement and related claims.
- This appeal challenges both the cancellation ruling and the likelihood-of-confusion finding; the Eighth Circuit reverses on the cancellation issue but affirms on the confusion ruling.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the district court properly canceled the registrations | Lovely Skin argues acquired distinctiveness existed at filing | Ishtar contends lack of substantial exclusivity showed no distinctiveness | Registrations reversed; lack of clear error in conclusion that Ishtar failed to prove lack of acquired distinctiveness |
| Whether there was a likelihood of confusion with livelyskin.com | Lovely Skin asserts confusion due to similar marks and markets | Ishtar argues factors show no confusion given care and niche market | No clear error; district court’s likelihood-of-confusion finding affirmed |
Key Cases Cited
- Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863 (8th Cir. 1994) (presumption of validity and secondary meaning interplay)
- Zobmondo Entm’t, LLC v. Falls Media, LLC, 602 F.3d 1108 (9th Cir. 2010) (registration on Principal Register carries strong presumption of validity)
- Curtis-Stephens-Embry, Co. v. Pro-Tek-Toe Skate Stop, Co., 199 F.2d 407 (8th Cir. 1952) (evidence of third-party registrations insufficient without proof of use)
- Scarves by Vera, Inc. v. Todo Imports Ltd., 544 F.2d 1167 (2d Cir. 1976) (third-party registrations must show actual use and recognition to negate exclusivity)
- SquirtCo v. Seven-Up Co., 628 F.2d 1086 (8th Cir. 1980) (six factors govern likelihood of confusion; no single factor controls)
- Calvin Klein Cosmetics Corp. v. Lenox Laboratories, Inc., 815 F.2d 500 (8th Cir. 1987) (no factor is determinative in confusion analysis)
- Heartland Bank v. Heartland Home Fin., Inc., 335 F.3d 810 (8th Cir. 2003) (circumstantial evidence supports acquired distinctiveness)