March 15, 2018
Pirkey Barber PLLC won a complete victory for its client, Anastasia Beverly Hills, Inc., in a trademark infringement trial in the U.S. District Court for the Southern District of Florida (Miami, FL). The dispute involved a makeup product formerly sold by Anastasia, called the Gleam Glow Kit. The kit contained four colors of face makeup, which Anastasia named Hard Candy, Mimosa, Starburst, and Crushed Pearl. Plaintiff Hard Candy, LLC, a Miami-based cosmetics company, sued Anastasia and claimed that the color name Hard Candy infringed Plaintiff’s trademark rights.
The case was tried to the Honorable Kathleen M. Williams in mid-January. Pirkey Barber attorney Travis Wimberly co-first chaired the trial, examining several witnesses and presenting opening and closing statements for Anastasia. Lou Pirkey provided strategic oversight, and Steve Meleen and Jered Matthysse also participated in various aspects of the case.
The Court announced its ruling on February 2, finding for Anastasia on all of Plaintiff’s claims. The Court found that consumers were not likely confused by Anastasia’s use of the words Hard Candy as a color name, and thus Anastasia did not commit trademark infringement. The Court also found in the alternative that, even if consumers had been confused, Anastasia’s use of the words Hard Candy was a “fair use” under the Lanham Act. Plaintiff has filed a notice of appeal to the U.S. Court of Appeals for the Eleventh Circuit. The parties’ appellate briefs will be due later this year.