$10 Million Kardashian Mishap
Khroma versus Kroma – what a difference the letter “H” may make in the success of the Kardashian product-endorsement empire. Khroma Beauty, marketed and licensed by Boldface Licensing + Branding, Inc, is a new cosmetics line launched in late 2012 and endorsed by the oh-so-famous Kardashian sisters. Boldface paid the Kardashians an upfront advance of $1 million for licensing rights with guaranteed minimum royalty payments of $4.6 million to $5.2 million, depending on launch dates of various products. Lee Tillet, owner of Kroma Makeup, is countersuing Boldface and the sisters as individual defendants in CA federal court. She alleges that Boldface’s use of the ‘Khroma’ brand name constitutes trademark infringement, false designation of origin, and unfair competition. Tillet is searching for a dismissal of Boldface’s suit, an injunction against the use of the Khroma name; oh, and a hefty $10 million in damages.
Tillet’s all-natural ‘Kroma Makeup’ launched in 2004, and was granted an official USPTO trademark for ‘Kroma’ in January 2012. In June 2012, Tillet sent Boldface a cease-and-desist letter, but Boldface ignored the letter, and countered with a lawsuit seeking a declaratory judgment so that it could continue to use the ‘Khroma’ name. Currently, Boldface has the mark ‘Kardashian Khroma’ on file with the USPTO, but it is still under a 1B filing basis, meaning that Boldface has yet to start using its trademark.
Seemingly, the Kardashian counsel counted on intimidating Tillet, but Tillet doesn’t want to simply hand over her rights in Kroma in exchange for a lucrative settlement; indeed, she has stated that she “built [her] business through [her] own hard work, and took the legal steps necessary to protect it.” Unsurprisingly, Boldface’s CEO Nicole Ostoya responded they do “not believe that there is any likelihood of confusion between Khroma Beauty… and any other entity.” Boldface’s counsel argues that the Khroma Beauty are inextricably linked with the Kardashian name, because the mark prominently features the Kardashian name. They argue that Tillet’s line is distinguishable from the Kardashian line because the packaging and marketing of the ‘Kroma’ mark is closely accompanied by the phrase “by Lee Tillet,” thus eliminating confusion among consumers.
Adding a certain level of intrigue is Tillet’s assertion that on or about May 2010, Tillet’s representatives and TLK Fusion, one of Kim Kardashain’s agents, engaged in discussions regarding a possible product placement of the KROMA® cosmetics line in an upcoming television special produced by Kim Kardashian, but the parties never reached an agreement. If this allegation proves to be true, it seems highly plausible that the Kardashian camp might have intentionally chosen to use the Khroma name despite complete knowledge of the pre-existing Kroma brand.