throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA843055
`
`Filing date:
`
`08/31/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petition for Cancellation
`
`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
`
`Petitioner Information
`
`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Michael Todd Beauty LP
`
`Corporation
`
`Citizenship
`
`Delaware
`
`648 Port St. Lucie Boulevard
`Port St. Lucie, FL 34953
`UNITED STATES
`
`Roberta Jacobs-Meadway
`Eckert Seamans Cherin & Mellott, LLC
`50 South 16th Street
`Two Liberty Place, 22nd Floor
`Philadelphia, PA 19102
`UNITED STATES
`Email: rjacobsmeadway@eckertseamans.com, cfran-
`giosa@eckertseamans.com, afleisher@eckertseamans.com, ipdock-
`et@eckertseamans.com
`Phone: 215-851-8522
`
`Registration Subject to Cancellation
`
`Registration No.
`
`5256062
`
`Registration date
`
`08/01/2017
`
`Registrant
`
`Worth Beauty, LLC
`3101 Richmond Avenue, Suite 120
`Houston, TX 77098
`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 021. First Use: 2014/11/10 First Use In Commerce: 2014/11/10
`All goods and services in the class are subject to cancellation, namely: Cosmetic applicators, namely,
`cosmetic brushes
`
`Grounds for Cancellation
`
`The mark is merely descriptive
`
`Trademark Act Sections 14(1) and 2(e)(1)
`
`The mark is not inherently distinctive and has not
`acquired distinctiveness
`
`Trademark Act Sections 14(1) and 1,2 and 45;
`and Section 2(f)
`
`Related Proceed-
`ings
`
`Attachments
`
`Civil Action No. 4:17-00163 in the Southern District of Texas
`
`Petition for Cancellation.pdf(277995 bytes )
`EXHIBIT A TO PETITION FOR CANCELLATION.PDF(686008 bytes )
`EXHIBIT B TO PETITION FOR CANCELLATION.PDF(1106060 bytes )
`
`

`

`EXHIBIT C TO PETITION FOR CANCELLATION.PDF(552175 bytes )
`
`Signature
`
`/Robert Jacobs-Meadway/
`
`Name
`
`Date
`
`Roberta Jacobs-Meadway
`
`08/31/2017
`
`

`

`I HEREBY CER
`TRADE AR
`By:
`DATE
`
`
`
`' ESPONDENCE IS BEING TRANSMITTED BY U.S. MAIL TO THE COMMISSIONER FOR
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`BOX TTAB — FEE
`
`MICHAEL TODD BEAUTY LP,
`
`: Cancellation No.
`
`Petitioner,
`
`: Reg. No. 5,256,062
`
`V.
`
`: Mark: BLENDSMART
`
`WORTH BEAUTY LLC,
`
`: Reg. Date: 08/01/17
`
`Respondent
`
`PETITION FOR CANCELLATION
`
`Honorable Commissioner for Trademarks
`
`PO. Box 1451
`
`Arlington, VA 22313—1451
`
`Michael Todd Beauty LP, (“Petitioner”), a limited partnership organized and existing
`
`under the laws of the State of Delaware with its principal offices located at 648 Port St. Lucie
`
`Boulevard, Port St. Lucie, Florida 34953, believes it will be damaged by Registration No.
`
`5,256,062 for the mark blend SMART, issued to Worth Beauty LLC, (“Respondent”) with an
`
`address of 3 101 Richmond Avenue, Suite 120, Houston, Texas 77098 and hereby petitions to
`
`cancel the same.
`
`As grounds for cancellation, Petitioner alleges as follows:
`
`1.
`
`Petitioner is a limited partnership organized in the State of Delaware with its
`
`principal offices located at 648 Port St. Lucie Boulevard, Port St. Lucie, Florida 34953.
`
`2.
`
`Petitioner sells a sonic makeup applicator under the trademark SONICBLEND.
`
`{M1675468.1}
`
`

`

`3. Respondent is the owner of two registrations for the mark BLENDSMART for
`
`“[c]osmetic applicators, namely, cosmetic brushes.” One is for the standard character mark
`
`BLENDSMART, Registration No. 4,842,589 and the other is for blend SMART, Registration
`
`No. 5,256,062 in which the word “blend” is in lower case and the word ”SMART,” is in upper
`
`case.
`
`4.
`
`The BLENDSMART mark that is the subject of this Petition is essentially the
`
`same mark as the earlier BLENDSMART mark, Registration No. 4,842,589, the two marks
`
`differing in stylization only.
`
`5. Respondent sued Petitioner for trademark infringement in the United States District
`
`Court for the Southern District of Texas, Civil Action No. 4:17-00163 (the “Texas Civil
`
`Action”). The suit alleges Petitioner’s sale of its SONICBLEND makeup applicators infringes
`
`Respondent’s BLENDSMART mark, Registration No. 4,842,589. A copy of the Complaint is
`
`attached as Exhibit A. See, Exhibit A, Count VI, 1111 77—80 and Count V11 1111 81-86).
`
`6.
`
`Petitioner counterclaimed for cancellation of Respondent’s Registration No.
`
`4,842,589 on the grounds that the mark of such registration is merely descriptive and lacks
`
`acquired distinctiveness. See, copy of Amended Answer and Counterclaim attached as Exhibit
`
`'
`
`B, Second Counterclaim, 1M 12-19.
`
`7.
`
`The Texas Civil Action is currently pending. A copy of the docket is attached as
`
`Exhibit C.
`
`8.
`
`Petitioner believes it will be damaged by the continued registration of the
`
`blefld SMART mark, Registration No. 5,256,062 and thus has standing to bring this Petition.
`
`9.
`
`As grounds for this Petition, Petitioner states that the blend SMART mark is
`
`merely descriptive of Respondent’s goods and has acquired no secondary meaning, and so is
`
`{M1675468.1}
`
`2
`
`

`

`precluded from registration pursuant to Section 2(e)(l) of the Trademark Act. The term “blend”
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`aptly and directly describes the function of the goods, that is, to blend makeup. The term
`
`“smart” aptly and directly describes the goods as featuring a particular level of technology. The
`
`combination of the two descriptive terms does not create any new or other significance than is
`
`conveyed by the descriptive terms individually.
`
`10. The application for registration of the mark of Registration No. 5,256,064 was filed
`
`January 10, 2017 based on use with a claimed date of first use of November 10, 2014. The mark
`
`is accordingly not entitled to any presumption of distinctiveness based on five (5) years use
`
`(Section 2(f) of the Act) and it is not entitled to a claim of acquired distinctiveness based on any
`
`period of substantially exclusive commercially significant use in commerce.
`
`Wherefore, Petitioner respectfully requests that this cancellation petition be granted and
`
`registration of the mark blend SMART, Registration No. 5,256,062, be cancelled.
`
`Respectfully submitted
`
`By:
`
`s/ Roberta Jacobs—Meadway
`ROBERTA JACOBS-MEADWAY
`
`ALEXANDER FLEISHER
`
`Eckert Seamans Cherin & Mellott, LLC
`
`Two Liberty Place
`50 South 16th Street, 22nd Floor
`
`Philadelphia, PA 19102
`(215) 851-8522
`rjacobsmeadway@eckertseamans.com
`afleisher@eckertseamans.com
`
`Dated: August 31, 2017
`
`Attorneys for Petitioner
`
`{M1675468.1}
`
`3
`
`

`

`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the attached Petition for
`
`Cancellation was served on counsel for Registrant, and counsel representing Registrant in the
`
`District Court action on the date listed below via email:
`
`Kyle M. Globerrnan
`Brient Globerman, LLC
`
`1175 Grimes Bridge Road, Suite 100
`Roswell, GA 30075
`info@brientgloberman.com
`kgloberman@brientip.com
`
`David K. Anderson - david@andersonlawfirm.com
`Julie B. Cunningham - julie@andersonlawfirm.com
`ANDERSON & CUNNINGHAM, P.C.
`Four Houston Center
`
`1221 Lamar, Suite 1115
`
`Houston, TX 77010
`
`Dated: August 31, 2017
`
`{M 1675468. 1}
`
`

`

`EXHIBIT A
`
`

`

`Case 4:17-cv-00163 Document 1 Filed in TXSD on 01/18/17 Page 1 of 29
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
`










`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CASE NO. ______________
`
`JURY TRIAL REQUESTED
`
`
`
`
`
`
`WORTH BEAUTY LLC,
`
`
`v.
`
`MICHAEL TODD BEAUTY LP, AND
`MTTO LLC
`
`
`
`
`
`
`
`
` PLAINTIFF,
`
`DEFENDANTS.
`
`PLAINTIFF’S ORIGINAL COMPLAINT
`
`Plaintiff, Worth Beauty LLC (“Worth Beauty” or “Plaintiff”) files this Original
`
`Complaint against Defendants Michael Todd Beauty LP, formerly known as Michael Todd LP,
`
`and MTTO LLC (collectively “Defendants”) and would show the Court the following:
`
`I.
`
`
`
`PARTIES
`
`1.
`
`Plaintiff Worth Beauty is a Virginia limited liability company with its principal
`
`place of business at 3101 Richmond Avenue, Suite 200, Houston, Texas 77098. All pleadings
`
`may be served on Worth Beauty through its attorney-in-charge, David K. Anderson, Anderson &
`
`Cunningham, P.C., Four Houston Center, 1221 Lamar, Suite 1115, Houston, Texas 77010.
`
`
`
`2.
`
`Defendant Michael Todd Beauty LP (“Michael Todd Beauty”), formerly known
`
`as Michael Todd LP, is a Delaware limited partnership with its principal place of business at 648
`
`Port St Lucie Blvd., Port St. Lucie, FL 34953. Michael Todd Beauty may be served with process
`
`through its registered agent for service of process, The Corporation Trust Company, Corporation
`
`Trust Center, 1209 Orange Street, Wilmington, Delaware 19801 .
`
`
`
`
`
`

`

`Case 4:17-cv-00163 Document 1 Filed in TXSD on 01/18/17 Page 2 of 29
`
`
`
`
`
`3.
`
`Defendant MTTO LLC (“MTTO”) is a Delaware limited liability company with
`
`its principal place of business at 648 Port St. Lucie Blvd., Port St. Lucie, FL 34953. As the
`
`general partner of Michael Todd Beauty, MTTO is jointly and severally liable for the actions,
`
`debts, and obligations of the limited partnership. MTTO may be served with process through its
`
`registered agent for service of process, The Corporation Trust Company, Corporation
`
`Trust Center, 1209 Orange Street, Wilmington, Delaware 19801
`
`II.
`
`
`
`NATURE OF ACTION, JURISDICTION AND VENUE
`
`4.
`
`This is an action for (a) infringement of copyrights under the Copyright Act of the
`
`United States, 17 U.S.C. §§ 501 et seq.; (b) trade dress infringement, unfair competition, and
`
`false designation of origin under the Lanham Act, 15 U.S.C. §§ 1051 et seq.; (c) common law
`
`trade dress infringement; (d) infringement of trademarks under the Lanham Act, 15 U.S.C. §§
`
`1051 et seq.; (e) common law trademark infringement; (f) common law unfair competition; (g)
`
`unjust enrichment; and (h) advertising injury through misappropriation of advertising ideas. The
`
`state law claims are substantially related to the claims arising under federal law; and as a result,
`
`this Court has ancillary jurisdiction over those claims.
`
`
`
`5.
`
`This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338,
`
`and 1367. This Court has federal question jurisdiction over this case because Worth Beauty has
`
`brought claims against Defendants under the United States Copyright Act, 17 U.S.C. §§ 501 et
`
`seq., and the Lanham Act, 15 U.S.C. §§ 1051 et seq. This court has the power to resolve the
`
`related state law claims under principles of pendent, supplemental and/or ancillary jurisdiction.
`
`This Court also has subject matter jurisdiction of this case under § 1332 because there is
`
`diversity of citizenship and the amount in controversy exceeds $75,000.
`
`
`
`6.
`
`The Court has specific and general personal jurisdiction over Defendants pursuant
`
`to the Texas Long Arm Statute for the following reasons: Defendants are present within or have
`
`
`
`2
`
`

`

`Case 4:17-cv-00163 Document 1 Filed in TXSD on 01/18/17 Page 3 of 29
`
`
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`minimum contacts within the State of Texas and the Southern District of Texas; Defendants have
`
`purposefully availed themselves of the privileges of conducting business in the State of Texas
`
`and the Southern District of Texas; Defendants regularly conduct and/or solicit business and
`
`engage in other persistent courses of conduct within the State of Texas and within the Southern
`
`District of Texas; Defendants have derived substantial revenues from their business activities,
`
`including their infringing acts, occurring within the State of Texas and the Southern District of
`
`Texas; and Plaintiff’s causes of action arise directly from Defendants’ activities in the State of
`
`Texas and in the Southern District of Texas.
`
`
`
`7.
`
`More specifically, Defendants directly and/or through authorized intermediaries,
`
`ship, distribute, offer for sale, sell, lease, market, and/or advertise infringing products in the State
`
`of Texas, and the Southern District of Texas, including but not limited to the marketing, offering
`
`for sale, sale, and distribution of Defendants’ sonicBLEND automated makeup brush. Defendants
`
`solicit customers for their line of products in the State of Texas and in the Southern District of
`
`Texas through their Michael Todd Beauty websites, national advertising, appearances on
`
`national television, and appearances on national televised shopping networks, including the
`
`publication infringing product videos. Defendants sell their line of skin care products, skin care
`
`devices, and beauty tools, including the infringing sonicBLEND makeup brush, in the State of
`
`Texas and the Southern District of Texas through internet websites, including Michael Todd
`
`Beauty, Amazon, Bed Bath & Beyond, and HSN, thereby committing conduct in this state that is
`
`in violation of both state and federal law. Defendants sell their line of skin care products, skin
`
`care devices, and beauty tools and at brick and mortar stores in the State of Texas and the
`
`Southern District of Texas, including Ulta Beauty superstores.
`
`
`
`3
`
`

`

`Case 4:17-cv-00163 Document 1 Filed in TXSD on 01/18/17 Page 4 of 29
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`
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`8.
`
`Defendants have committed infringing acts both inside and outside the State of
`
`Texas and the Southern District of Texas that have caused injury to Worth Beauty within this
`
`state, and Defendants regularly do or solicit business, engage in other persistent course of
`
`conduct, or derive substantial revenue from goods used or consumed in the State of Texas and
`
`the Southern District of Texas, or expect or should reasonably expect the infringing acts at issue
`
`herein to have consequence in this state.
`
`
`
`9.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391(b), 1391(c),
`
`1400(a) and/or 1400(b). Defendants have transacted business in this judicial district, and have
`
`directly and indirectly committed and/or induced acts of copyright, trademark, and trade dress
`
`infringement in this district. Additionally, Worth Beauty is the owner of the copyrights,
`
`trademarks, and trade dress that are the subject of this litigation, and Worth Beauty resides in the
`
`Southern District of Texas. Worth Beauty developed the blendSMART makeup brush and its
`
`associated intellectual property, including copyright protected videos, trademarks, and trade
`
`dress, at least in part in the Southern District of Texas. Worth Beauty commercialized and used
`
`the protected intellectual property in the Southern District of Texas.
`
`IV.
`
`FACTUAL BACKGROUND
`
`
`
`10. Worth Beauty develops, markets, and sells cutting-edge beauty tools and
`
`products. The company’s strategy is to combine technology with innovative design to create
`
`beauty products that are easy to use and more effective than conventional tools or methods. It is
`
`a growing company that is expanding its product lines through innovation. Worth Beauty’s
`
`mission is to achieve for makeup application what other automatic tools have done for skincare
`
`and oral care.
`
`
`
`11.
`
`The company’s flagship product line is a first-of-a-kind Automated Makeup
`
`Brush System™ for the application of makeup and other beauty products, which is sold under
`
`
`
`4
`
`

`

`Case 4:17-cv-00163 Document 1 Filed in TXSD on 01/18/17 Page 5 of 29
`
`
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`the trademark blendSMART. The blendSMART brush was the first automatic motorized makeup
`
`brush, and the product represents a breakthrough in the beauty industry. Worth Beauty developed
`
`the blendSMART brush system, and now manufactures, markets, and sells, the blendSMART brush
`
`system internationally. Worth Beauty is the owner of all intellectual property rights relating to
`
`the blendSMART automated makeup brush system.
`
`
`
`12. Worth Beauty’s blendSMART rotating makeup brush system includes an
`
`automated ergonomic handle and an
`
`interchangeable foundation brush head.
`
` The
`
`interchangeable brush head spins at 190 RPMs and mimics the motion of professional makeup
`
`artists to deliver flawless blending. Worth Beauty currently offers a number of additional
`
`blendSMART interchangeable brush heads, including a blush brush head, definer brush head,
`
`powder brush head, and full coverage and finishing brush head, that allow the customer to easily
`
`change out the brush head, while utilizing one handle.
`
`
`
`13.
`
`In April 2015, the blendSMART rotating makeup brush debuted on QVC, a
`
`television network, specializing in televised home shopping. The blendSMART brush was sold as
`
`the Doll No. 10 Beauty blendSMART Rotating Makeup Brush System, and it was featured on
`
`QVC’s domestic channel as well as QVC’s international channels in England, Italy, Germany,
`
`and France. Initially, the product was exclusively available through QVC for a period of six (6)
`
`months as required by QVC policy, and the product was very well received by customers and the
`
`beauty industry.
`
`
`
`14.
`
`Today, the blendSMART makeup brush system and the additional brush heads are
`
`available online through the company’s website.1 Worth Beauty’s blendSMART products are also
`
`available for sale online through Sephora’s website2 and through websites of domestic and
`
`
`1 https://www.blendsmart.com/
`2 http://www.sephora.com/blendsmart
`
`
`
`5
`
`

`

`Case 4:17-cv-00163 Document 1 Filed in TXSD on 01/18/17 Page 6 of 29
`
`
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`international authorized dealers. The blendSMART products may also be purchased at domestic
`
`and international brick and mortar prestige boutiques.
`
`
`
`15.
`
`On September 17, 2014, Worth Beauty filed an application to register the
`
`blendSMART trademark with the United States Patent Office (“PTO”) for use in connection with
`
`cosmetic applicators, namely cosmetic brushes. The blendSMART trademark claimed standard
`
`characters without claim to any particular font, style, size or color. Worth Beauty is the owner of
`
`U.S. Registration No. 4,842,589, issued on October 27, 2015, in International Class 21. Worth
`
`Beauty is currently seeking federal trademark protection for its unique product mark and logo
`
`blendSMART.3
`
`
`
`16
`
`Since at least 2014, and well before Defendants’ infringing acts, Worth Beauty
`
`has continuously used the blendSMART trademark and product mark and logo to market and sell
`
`the blendSMART rotating makeup brush system. Worth Beauty has sold the automated makeup
`
`brush and interchangeable brush heads under the blendSMART trademark and product mark and
`
`logo since the products’ inception and introduction. Worth Beauty has acquired ownership by
`
`adopting and continuously using the blendSMART trademark and product mark and logo in such a
`
`way that the public and the industry associates the blendSMART mark with Worth Beauty and its
`
`automated makeup brush and accessories.
`
`
`
`17. Worth Beauty has developed several other trademarks that it has continuously
`
`used to promote and market its blendSMART products, including “A Revolution in Makeup
`
`Application™” and “Natural Looking Results with Confidence™.” Worth Beauty has acquired
`
`ownership of these trademarks by adopting and continuously using these trademarks in such a
`
`
`3 A true and correct copy of U.S. Registration No. 4,842,589 issued by the United States Patent Office on October
`27, 2015 is attached to this Complaint and incorporated herein by reference as EXHIBIT A.
`
`
`
`6
`
`

`

`Case 4:17-cv-00163 Document 1 Filed in TXSD on 01/18/17 Page 7 of 29
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`
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`way that the public and the industry associates theses marks with Worth Beauty’s automated
`
`makeup brush and accessories.
`
`
`
`18. Worth Beauty has acquired trademark rights in the inherently distinctive
`
`blendSMART name, product mark, and logo, including the product’s non-functional dimensions,
`
`shape, blendSMART product name, mark and logo, placement of the blendSMART product name,
`
`mark and logo on the product’s brush handle, and the shape and size of the interchangeable
`
`heads. The individual features and elements of the blendSMART automated makeup brush; the
`
`combination of such features and elements; and the look, appearance, and image of the product,
`
`including its packaging, advertising, color schemes, layout, font selection, marks, logos, and
`
`catch phrases, taken as a whole and in combination, identify the brush as originating exclusively
`
`with Worth Beauty. This trade dress has developed a secondary meaning and is recognized
`
`throughout the industry. The public associates this trade dress with Worth Beauty’s blendSMART
`
`products. Worth Beauty has spent considerable resources to develop the goodwill associated
`
`with this product and its associated intellectual property. As a result, it has substantial economic
`
`value and the potential to acquire a great deal more economic value.
`
`
`
`19.
`
`As part of its marketing and promotion efforts for the blendSMART brush system,
`
`Worth Beauty created and published three blendSMART product introduction and tutorial videos,
`
`including (1) an introductory product video that describes and demonstrates the blendSMART
`
`brush system;4 (2) a liquid foundation tutorial that shows consumers how to use the blendSMART
`
`brush to apply liquid foundation;5 and (3) a powder foundation tutorial that shows consumers
`
`
`4 https://www.youtube.com/watch?v=KP-MPAb0muo
`5 https://www.youtube.com/watch?v=wdYS2UOsE_k
`
`
`
`7
`
`

`

`Case 4:17-cv-00163 Document 1 Filed in TXSD on 01/18/17 Page 8 of 29
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`
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`how to use the blendSMART brush to apply powder foundation.6 Worth Beauty is the owner of
`
`all copyrights to each of the three videos.
`
`
`
`
`
`20.
`
`On August 16, 2016, Worth Beauty filed an application to register its copyright
`
`for
`
`the
`
`introductory product video, “BLENDSMART2016” (Service Request No. 1-
`
`3913149631), and the application is currently pending. The introductory product video was first
`
`published on May 25, 2016.7
`
`
`
`21.
`
`On August 29, 2016, Worth Beauty filed an application to register the copyright
`
`for the powder foundation tutorial, “BlendSMART Powder Application” (Service Request No. 1-
`
`3950265111), and the application is currently pending.8 The powder foundation tutorial video
`
`was first published on March 14, 2016.
`
`
`
`22.
`
`On January 11, 2017, Worth Beauty filed an application to register the copyright
`
`for the liquid foundation tutorial, “blendSMART How-To Liquid Foundation (Service Request
`
`No. 1-4332903691), and the application is currently pending. The liquid foundation tutorial
`
`video was first published on March 14, 2016.
`
`
`
`23.
`
`In Summer 2016, Worth Beauty became aware that Defendants were selling a
`
`confusingly similar automated makeup applicator under the name and trademark sonicBLEND.
`
`Defendants have been having been causing confusion in the market and trading off the goodwill
`
`of the blendSMART product. For example, Worth Beauty heard people say that they had seen its
`
`products on ABC’s “The View” television show, but it was Defendants’ automated makeup
`
`brush that had been presented on The View, not Worth Beauty’s blendSMART brush. Customers,
`
`potential customers, and others were confused because the brushes were strikingly similar, if not
`
`
`6 https://www.youtube.com/watch?v=Q1oG8gWV3ik
`7 A true and correct copy of the Copyright Application for “BLENDSMART2016” (Service Request No. 1-
`391314963) is attached to this Complaint and incorporated herein by reference as EXHIBIT B.
`8 A true and correct copy of the Copyright Application for “BlendSMART Powder Application” (Service Request
`No. 1-3950265111) is attached to this Complaint and incorporated herein by reference as EXHIBIT C.
`
`
`
`8
`
`

`

`Case 4:17-cv-00163 Document 1 Filed in TXSD on 01/18/17 Page 9 of 29
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`
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`virtually identical, and the Defendants’ marketing and promotional materials are deceptively
`
`similar. In that particular presentation, the presenter said that Defendants’ brush spins (just like
`
`the blendSMART), even though the Defendants’ brush actually vibrates rather than rotates.
`
`
`
`24.
`
`Defendants manufacture, market, and sell a line of skin care, skin care devices,
`
`and beauty tools, and the sonicBLEND makeup application brush is among those products.
`
`Defendants describe the sonicBLEND as a “sonic applicator makeup brush.” The sonicBLEND
`
`system includes an “ergonomically designed” makeup brush handle and an “interchangeable
`
`universal brush head.”
`
`
`
`25.
`
`Defendants sell the sonicBLEND makeup brush and replacement universal brush
`
`heads through the Michael Todd Beauty websites9, Bed Bath & Beyond,10 and Amazon.11
`
`Defendants recently presented the sonicBLEND on HSN, a national network providing televised
`
`home shopping. The sonicBLEND makeup brush and additional brush heads are now available
`
`for purchase on HSN’s websites.12
`
`
`
`26.
`
`Defendants’ logo and trademark for its automated makeup brush, sonicBLEND, is
`
`confusingly and intentionally similar to Worth Beauty’s blendSMART logo and trademark for its
`
`automated makeup brush. Both logos and trademarks feature two words presented together
`
`(blendSMART and sonicBLEND) with the first word featuring small letters (“blend” and “sonic”),
`
`the second word placed in all small capital letters in bold font (“SMART” and “BLEND”), and both
`
`trademarks prominently including the word “blend”:
`
`
`9 http://www.michaeltoddbeauty.com/devices/sonicblend/sonicblend.html;
`http://www.michaeltoddbeauty.com/devices/sonicblend/round-top-sonicblend-brush-head-6.html
`10 https://www.bedbathandbeyond.com/store/product/michael-todd-sonic-blend-sonic-makeup-
`brush/3295872?categoryId=13754
`11 https://www.amazon.com/Michael-Todd-SonicBlend-Antimicrobial-
`Makeup/dp/B01IRGH272/ref=sr_1_1_s_it?s=beauty&ie=UTF8&qid=1483641343&sr=1-
`1&keywords=sonicblend&th=1
`12 https://www.hsn.com/products/michael-todd-sonicblend-sonic-makeup-brush-black/8261746;
`https://www.hsn.com/products/michael-todd-sonicblend-flat-top-makeup-brush/8261873;
`https://www.hsn.com/products/michael-todd-sonicblend-round-top-brush-head/8261890
`
`
`
`9
`
`

`

`Case 4:17-cv-00163 Document 1 Filed in TXSD on 01/18/17 Page 10 of 29
`
`blendSMART®
`
`
`
`
`
`sonicBLEND™
`
`
`
`
`
`
`
`
`
`
`
`
`
`27. Worth Beauty discovered that Defendants had published three product videos on
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`the sonicBLEND product page of the Michael Todd Beauty website that were virtually identical,
`
`to the three blendSMART product videos published by Worth Beauty and used to market and
`
`promote the blendSMART automated makeup brush. The Michael Todd Beauty videos appear to
`
`be intentional copies of the Worth Beauty videos. Defendants’ use of Worth Beauty’s videos is
`
`unauthorized.
`
`
`
`28.
`
`For example, Defendants’ video, entitled “Discover SonicBLEND by Michael
`
`Todd Beauty, World’s First Antimicrobial Makeup Brush”, appears to be a virtual copy of the
`
`blendSMART introductory video. As shown below, the script for Defendant’s brand video is
`
`directly copied from the product video that Worth Beauty created and published to introduce and
`
`market its blendSMART products:
`
`
`
`
`
`blendSMART 2016 Video
`
`
`
` Discover sonicBLEND
`
`blendSMART came from answering a
`simple question. Shouldn’t there be a
`brush that blends makeup easily and
`dramatically more effectively than
`traditional make up brushes and
`techniques,
`
`It all started with a simply question,
`can a sonic powered makeup brush
`more quickly and effectively apply
`foundation and makeup than other
`makeup applications.
`
`
`
`10
`
`

`

`Case 4:17-cv-00163 Document 1 Filed in TXSD on 01/18/17 Page 11 of 29
`
`
`so by taking this simple concept of the
`blending motion and refining with
`technology and innovative design, we
`created blendSMART, the first ever
`automated rotating makeup brush,
`
`
`It rotates at 190 rpm, that’s 3 times per
`second, which is faster and more
`consistent than a human being and
`results speak for themselves.
`
`If you are a liquid foundation fan, let
`blendSMART show you a new way to
`flawlessly blend makeup every time.
`
`
`Simply glide the brush over makeup,
`buffing into skin with up and down and
`side to side motions until you’ve got
`your desired coverage.
`
`It’s nearly effortless. And you’ve got a
`polished airbrush look thanks to the
`blendSMART rotating makeup brush
`and your foundation.
`
`
`blendSMART will achieve for makeup
`application what other automative tools
`have done for oral care or skin care.
`
`
`blendSMART is a revolution in makeup
`application.
`
`
`by taking this simple concept of
`blending motion and refining it with
`technology and innovative design,
`we’ve created sonicBLEND, the world’s
`first antimicrobial sonic powered
`makeup brush.
`
`It moves at sonic speeds of up to 200
`times per second, which is much faster
`and more consistent than manual and
`rotary makeup brushes. Also
`sonicBLEND has built in protection.
`
`Let sonicBLEND flawlessly blend your
`foundation every time. If you are a
`liquid foundation fan, just apply a few
`dots to key points on your face.
`
`Simply glide the brush over the
`makeup, lightly blend makeup in long
`sweeping motions until you get desired
`coverage.
`
`It is nearly effortless, and you have a
`polished airbrush look thanks to the
`sonicBLEND, the world’s first
`antimicrobial sonic powered makeup
`brush
`
`sonicBLEND will achieve for makeup
`application what all other automatic
`tools have done for oral care or skin
`care.
`
`sonicBLEND is a revolutionary makeup
`application brush.
`
`29.
`
`Defendants copied not only the script for Worth Beauty’s product video, but also
`
`
`
`
`
`
`
`the complete look and feel of the video, including the video shots, sequencing, product
`
`placement, and graphics.
`
`
`
`11
`
`

`

`Case 4:17-cv-00163 Document 1 Filed in TXSD on 01/18/17 Page 12 of 29
`
`
`
`
`
`30.
`
`Defendants also published a video entitled “SonicBlend – How to Apply Liquid
`
`Foundation”, which is strikingly similar to the blendSMART liquid foundation tutorial which
`
`Worth Beauty created and published to show consumers how to use the blendSMART automated
`
`makeup brush with liquid foundation. A side by side comparison shows that the scripts are
`
`virtually identical:
`
`
`
`
`blendSMART® Liquid
`Foundation Application
`
`
`
`
` SonicBlend – How to Apply
` Liquid Foundation
`
`If you are a liquid foundation fan, let
`blendSMART show you a new way to
`flawlessly blend your makeup every
`time.
`
`Start with your favorite foundation and
`apply a few dots to key points on your
`face.
`
`Remember less is more.
`
`Put your foundation brush head which
`is included in the starter kit into the
`handle.
`
`Turn on your brush and start blending
`makeup into your skin.
`
`Simply glide the brush over the
`makeup, buffing into the skin with
`side-to-side and up and down motions
`until you’ve got your desired coverage.
`
`It’s nearly effortless and you’ve got a
`polished air-brushed look thanks to the
`blendSMART rotating brush and your
`foundation.
`
`Now that’s smart . . . .
`
`If you are a liquid foundation fan, let
`sonicBLEND show you a new way to
`flawlessly blend your makeup every
`time.
`
`Start with favorite liquid foundation
`and apply a few dots to key points on
`your face.
`
`Remember less is more.
`
`Put your foundation brush head
`included in the starter kit in the handle.
`
`Turn on the brush. Start blending
`makeup into your skin.
`
`Simply glide the brush over the
`makeup, buffing into skin with long
`strokes and sweeping motions until you
`achieve desired coverage.
`
`sonicBLEND uses gentle sonic
`movements to easily brush on
`foundation without leaving lines or
`streaks for natural looking airbrushed
`results every time. You get a polished
`airbrushed look thanks to sonicBlend.
`
`Now that’s how you achieve a flawless
`finish.
`
`12
`
`
`
`
`
`
`
`

`

`Case 4:17-cv-00163 Document 1 Filed in TXSD on 01/18/17 Page 13 of 29
`
`
`
`
`
`
`
`Hope you enjoyed the blendSMART
`tutorial.
`
`We hope you enjoyed the sonicBLEND
`tutorial.
`
`31.
`
`Defendants’ third video, entitled “SonicBlend – How to Apply Powder
`
`Foundation”, is also virtually identical to the blendSMART powder foundation tutorial, which
`
`shows consumers how to use the automated makeup brush with powder foundation. For
`
`example, the scripts are compared below:
`
`
`
`
`blendSMART Powder
`Foundation Application
`
`
`
`
` SonicBlend – How to Apply
`
`Powder Foundation
`
`In this tutorial, let’s see how to best
`appl

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