Cosmetics Companies Fight Over Initials

DALLAS (CN) – Mary Kay cosmetics sued luxury designer Michael Kors, claiming he’s selling cosmetics using an “MK” trademark, in breach of contract.
     Addison, Texas-based Mary Kay sued Michael Kors LLC in Dallas County Court.
     In 2005, the parties settled a dispute over Kors’ use of various “MK” marks that he tried to register for competing products, according to the complaint.
     Mary Kay claims that in 2011 Kors twice asked to modify the agreement, to allow Kors to register the “MK Charm Logo” mark, but Mary Kay refused.
     However, “Notwithstanding the restrictive covenants of the coexistence agreement and Mary Kay’s opposition, Michael Kors filed two unauthorized applications for trademark registration on May 12, 2012 without providing notice to Mary Kay,” the complaint states. “Mary Kay did not discover the existence of the ‘MK Charm Logo’ filings until late November 2012.”
     The first filing with the U.S. Patent and Trademark Office includes the letters “MK” with a circle around the letters; the second filing is the same but with the words “Michael Kors” on the bottom border of the circle, the complaint states.
     The first application is the very logo about which Kors contacted Mary Kay in 2011, according to the complaint.
     Mary Kay claims that Kors and (nonparty) Estee Lauder are jointly marketing a limited-edition cosmetics gift package that includes the second infringing mark.
     “The referenced Michael Kors cosmetic case bears the MK Charm With Michael Kors Mark and it can be purchased via dozens of retailers, including Nordstrom and Macy’s,” the complaint states.
     Mary Kay claims the agreement in place prohibits Kors from using “MK” standing alone, or in close proximity to “Michael Kors,” or in connection with “any products whatsoever” for cosmetics products or services.
     Mary Kay seeks an injunction and damages for breach of contract and trademark infringement.
     It is represented by John Cox with Lynn Tillotson in Dallas.
     Mary Kay claims it had $3 billion in sales in 2012.

%d bloggers like this: