Don't assume that copycats will be identical - they are smarter than that
How far can you get by copying someone else’s brand? Pretty far, as it turns out.
Buckle up, because this story is wild.
Carol’s Daughter is a highly successful beauty brand that was launched by Lisa Price from her home kitchen in 1993. Price steadily grew the business, opening her first storefront in 1999 and appearing on The Oprah Winfrey Show in 2002. But by 2008, Carol’s Daughter had a problem - a competitor called “Carols’ Express”.
According to court documents from the Seventh Circuit, Carol's Express hired a consultant and started negotiating a deal to be distributed in CVS. During the process, the consultant led the CVS distributor to believe that Carol's Express and Carol's Daughter were both owned and run by Lisa Price. At the time, Carol’s Daughter was being sold in stores like Sephora, but not in drug stores like CVS. According to the court, the consultant explained away this contradiction by telling the CVS distributor that Carol’s Express was the “retail expression” of Carol's Daughter. Convinced by the consultant that everything was good to go, the distributor approved the deal.
In reality, nothing could have been further from the truth. Carol’s Daughter was gearing up to sue Carol’s Express for trademark infringement. In July of 2008, Carol’s Daughter sent Carol’s Express a cease and desist letter. Carol’s Express kept pressing forward with CVS and their products ultimately made it into CVS stores. Carol’s Daughter then sued Carol’s Express and obtained a court order to have the infringing products removed from stores and destroyed.
Takeaways
Take copycats seriously, even when the copying is not “identical”:
A copycat does not have to be an identical replica to still take advantage of your good reputation. “Carol’s Daughter” and “Carol’s Express” seem like very different brand names at first, but the names were still close enough for a sophisticated CVS distributor to believe that Carol's Express was a legitimate affiliate.
Be prepared to go all the way
If Carol’s Daughter had stopped after sending the cease and desist, the competing products would have stayed on the shelves at CVS, likely confusing customers and devaluing their higher-end brand. Too often, I field questions from companies who want to send a cease and desist letter, but are not actually willing to do any more work after that. While litigation may seem expensive at the beginning, it pales in comparison to the cost of rescuing your brand from an aggressive and successful lookalike.
Make sure your trademark is registered with the United States Patent and Trademark Office
If a competitor ever tries to rip-off your brand, you don’t want to have to argue about who actually owns the trademark. A federally registered trademark gives you the legal right to exclusively own and enforce your trademark nationwide. Without the registration, you’re stuck in a “he said, she said” situation. With the registration, you are automatically presumed to be the rightful trademark owner under law.
Thanks for reading the Bevel Law Blog! While this information is hopefully helpful to you, nothing in this blog is intended to be legal advice. Always consult a lawyer before making any legal decisions based on topics in this blog.
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