I ♡ Trademarks Conference 2025Beauty Is in the Eye of the IP Holder: Protecting Beauty Brands in the Cosmetics Industry
Alt Legal Team | January 27, 2025
At the Alt Legal I ♡ Trademarks Conference on March 18, 2025, Claire Gibson (Day Pitney) and Michael Wheeler (Coty) will engage in a fireside chat for the session, “Beauty Is in the Eye of the IP Holder: Protecting Beauty Brands in the Cosmetics Industry.” Download the presentation materials here. Here are some key takeaways from the session:
- Claire – This industry loves descriptive terms but they really can’t use these terms. As firm counsel I’ve sat in many conversations especially with marketing and development and it’s your responsibly to educate them about these things. You can help them understand that they can strike a balance with suggestive marks. There are lots of brands that fall into this category, for example, BARE MINERALS for example. That can help a company get a marketable company and you can help them protect that brand.
- Michael – The concept of “lock up” is an important term to emphasize to marketing teams if they have a more descriptive, suggestive term that they can add a brand name to lock it up. Marketing teams often want to unlock over time and we have to be firm and tell them to keep locking it up with the brand name. Claire – When you’re dealing with emerging brands the cost of house brands + locked up terms gets extremely expensive so you want to talk to the client about which brands are going to be continuing brands and have longevity.
- Claire – One of the most important insurance policies for beauty brands is to do a clearance search to make sure that you can get a mark registered and that you’re not infringing on another person’s mark. Clearance is especially important in the beauty because it’s competitive and crowded. 95% of words in the English language are registered in one class or another and Class 3 is very densely populated. Carving your way in and making sure you have a brand name that is unique and registrable is the best place to start. Also be sure to do design clearance searches. Because this area is so crowded, if you come close to a trade dress that is protected you’ll end up in a litigation situation. Michael – Also be mindful when it comes to clearance of legacy marks. Sometimes descriptive marks have been registered for a long time and you might thing something descriptive isn’t trademark protected, but it is actually registered. For example, Cody has registrations for CLEAN and CLEAN AND FRESH.
- Claire – Look to other types of IP protection beyond trademarks including scent, color, trade dress, etc. Consider elements beyond the brand name that you’re using and look at the packaging, bottle and container, the product line, etc. These elements are very often eligible for protection so talk to clients about totality of their brand so that you have a robust enforcement strategy.
- Michael – We will often file EU Community designs which have a lot of benefits. They’re very cheap and quick to file. It’s great to get some sort of protection on paper.
- Claire – When you’re looking to get trade dress protection for product packaging, get ahead of the marketing and development folks as much as you can to ensure that they are creating elements that are not merely functional. If elements are designed for aesthetic purposes, they will be eligible for trade dress registration. Simple tweaks in the design can you get you protection you otherwise wouldn’t have.
- Claire – If you end up with a design that is eligible for patent design then you absolutely want to advise your clients to pursue that. It’s not uncommon in the beauty industry for designs to be subject for design patent protection. For example, the Fenty compact has an unusual shape that snaps together with other compacts. The mechanism for how the compact snaps together made it eligible for a design patent and it is registered.
- Michael – If you’re considering a design patent in US certain considerations apply in terms of timing – if you’re filing do so in the US first before you do a foreign filing as this is what the US prefers. Be sure to speak to a patent attorney to understand the filing nuances.
- Claire – It is very common for beauty products to be counterfeited and you must be proactive and talk to your clients about enforcement. Make sure that you have a comprehensive online ecommerce enforcement protocol and look across all platforms. If client can afford a web crawler, this is also a great option. Online enforcement is unfortunately whack-a-mole, but without enforcement efforts, clients can stand to lose a lot of money or even their brands. It is very important to help clients understand how much they stand to lose if they don’t enforce their brands. If the cost of enforcement is less than what they stand to lose, this is the easiest way to translate to clients how important enforcement is.
- Claire –There’s a wide range of what licensing agreements look like and how it is structured really depends on what the end goal is. Someone like Kylie Jenner is selling her name to a cosmetics brand, whereas Bobbi Brown sold her established line to Estee Lauder – those agreements would look very different. Consider factors including exclusive licensing for all brands, house brand, or different product lines, the royalty structure and reporting, and the term. Also ensure that the agreement is non-predatory. This is especially important for new brands breaking into the industry. Make sure you’re advocating for your client and what it means long term to getting into a license agreement.
- Claire – When entering into a collaboration agreement, ensure that there is clarity of ownership of the product and make sure that you advocate for your client. Limit what the licensee is allowed to use the brand for.
Speakers
Claire Gibson
, IP Counsel, Day Pitney
Claire is IP Counsel at Day Pitney, Chair of the Trademark Commission of the IP Section of the York State Bar Association and a Board Member of the National Conference of Women’s Bar Associations. Her practice focuses on domestic and international trademark prosecution, enforcement and licensing as well as all aspects of copyright law. Claire began her career in intellectual property law almost two decades ago as a clerk in the Office of the General Counsel at JPMorganChase while completing her undergraduate degree at Columbia University. A Brooklyn Law School alum, she has honed her expertise in the areas of trademark and copyright law while at the legal departments of DreamWorks Classics and NBC Universal. Now as an IP Counsel at Day Pitney’s New York Office, Claire counsels a wide array of industry clients, on establishing, protecting and preserving their intellectual property rights both in the US and abroad.
Michael Wheeler, Assistant General Counsel, Coty (Moderator)
Michael is a graduate of Northwestern University and Seton Hall University School of Law. He has practiced Intellectual Property Law for 15 years, having managed IP portfolios for multiple Fortune 500 companies, including Walmart and Microsoft. Currently, Michael serves as Assistant General Counsel at Coty, Inc., where he handles the global IP portfolio for several luxury and consumer beauty brands, such as Kylie Cosmetics, Calvin Klein and Marc Jacobs perfumes, Covergirl, SKKN by Kim, Sally Hansen, Philosophy, and Rimmel London. Michael has managed federal trademark and copyright litigation involving beauty products, celebrity influencers, software, frozen foods, toys, and a variety of other consumer goods, and has a similar breadth of practice before the Trademark Trial and Appeal Board.