Wrong Rhode, Hailey Bieber

While Hailey Bieber’s new skin care brand Rhode promises “happy and hydrated skin”, the brand itself has a blemish: an alleged trademark infringement. On June 21, 2022, Rhode-NYC, LLC. filed a complaint in the US District Court for the Southern District of New York against Hailey Bieber and her companies RHODEDEODATO CORP. and HRBEAUTY, LLC for trademark infringement and unfair competition. Rhode-NYC, LLC. argues that Hailey Bieber’s use of her middle name “Rhode” as the name of her skincare brand is creating market confusion and consequently potential harm to its goodwill and reputation.

Promotional posters for Hailey Bieber's brand Rhode.

Despite sharing the name Rhode, the two brands have different roots. The fashion brand Rhode was founded in 2014 by two women entrepreneurs Purna Khatau and Phoebe Vickers. Since then, Khatau and Vickers have established their brand as evident in its projection to generate $20 million in 2023, availability in retailers like Net-a-Porter, Neiman Marcus, Shopbop and Saks Fifth Avenue, and recognition by Vogue and famous fans such as Beyoncé, Tracee Ellis Ross, and Lupita Nyong’o. In comparison, Rhode skincare is Hailey Bieber’s latest venture during an era of celebrity-backed brands. Consequently, rather than slowly building a brand reputation, Hailey Bieber was able to leverage her, and Justin Bieber’s, fame and social media following to promote her brand.

The history of Hailey Bieber and her companies’ trademark applications suggests that they were aware of Rhode-NYC’s prior trademark rights and the brand confusion that would result from the existence of both Rhode brands. In November 2018, Hailey Bieber and her companies tried to buy the RHODE trademark from Rhode-NYC after filing an application with the U. S. Patent and Trademark Office (USPTO) for the use of Rhode on clothing. Instead, in December 2020 Hailey Bieber and her companies filed an intent-to-use trademark application for RHODE as a word mark and stylized word depiction for use in skincare, fragrances, etc. Notably, Rhode-NYC did not oppose the application.

Hailey Bieber and her companies' trademark registration.

By suing Hailey Bieber and her companies for trademark infringement, Rhode-NYC argues that Hailey Bieber’s Rhode mark is creating source confusion and potential harm to the Rhode fashion brand’s reputation and goodwill. The RHODE mark situation demonstrates reverse confusion rather than traditional trademark infringement where the public confuses the new user of a similar mark as originating from the older user. Instead, reverse confusion occurs when a new user of a similar mark, usually with more resources, informs the public of their trademark which creates confusion that the old user’s goods and services originate from the new user. As evidence of source confusion, Rhode-NYC claims that search engine results for “rhode” were immediately populated by Hailey Bieber and her companies’ brand. Further, consumers have been tagging the wrong brand on Instagram. While individuals cannot be banned from using their name in a non-commercial way, individuals do not have limitless rights over their name in commercial uses.

The two brands registered the RHODE mark for different uses under the Nice Classification system; however, Rhode-NYC argues that expansion of either brand increases the potential for harm because the uses are in adjacent industries. Following the trend of celebrity brands, Hailey Bieber’s Rhode is unlikely to remain in the realm of skincare as Hailey Bieber and her companies are already filing trademark applications outside cosmetics and into fashion related goods, and promising Rhode clothing. This expansion of a beauty brands into fashion related goods mimics the beauty brand Glossier’s development of the line “GlossiWEAR” which includes apparel and accessories. In addition, Rhode-NYC claims that Hailey Bieber and her companies’ use of the RHODE mark prevents Rhode-NYC from entering the beauty market.

Interestingly, this conflict over the RHODE mark demonstrates the trademark implications of celebrity brands. Specifically, how celebrities’ existing fame and visibility can be leveraged to acquire trademark rights at the potential expense of an older company. In addition, further complications can arise when brands want to naturally expand into closely related industries like fashion and beauty. Ultimately, Rhode-NYC co-founders are not bitter at Hailey Bieber and the advantage celebrity brands may have in branding, rather they are acting to protect their business. They explained in an Instagram statement, “We don’t want to sue Hailey; we want to celebrate her. As fellow women entrepreneurs, we wish her every success. Hailey could choose any brand for her skin-care line. We have only the brand name “RHODE” that we’ve built”.