More on the Touch of Pink Case

 We still await the judge’s order in the case Mary Kay Cosmetics brought against Touch of Pink Cosmetics. The jury made its decisions, which all went against TOP. However, the case is not concluded until the judge actually rules. The judge could decide to throw out some or all of the jury’s decisions. That doesn’t often happen, but there is still hope. Whatever jury decisions are upheld by the judge, TOP would have the opportunity to appeal.

Of course, Mary Kay is asking the judge to rule (essentially, make the jury’s verdict final in the case) and has filed a motion regarding this . The motion says in part:

After a trial on the merits, the jury found that Defendants infringed Mary Kay’s trademarks and engaged in unfair competition and passing off with the specific intent to cause confusion, to cause mistake, and to deceive. The jury also rejected all of Defendants’ affirmative defenses, and awarded Mary Kay an accounting of profits. Based on the jury’s verdict, Mary   Kay now seeks the entry judgment for the amount of $1,139,962.00, plus post-judgment interest at the applicable legal rate.

Mary Kay also seeks the entry of a permanent injunction to prohibit Defendants (and to   protect Mary Kay) from any future acts of infringement, unfair competition, and passing off. Specifically, this Court should enjoin Defendants from: (1) promoting, advertising, offering for sale, selling, or otherwise distributing any Mary Kay products using the names “Touch of Pink Cosmetics” or “MaryKay1Stop;” (2) promoting, advertising, offering for sale, selling or otherwise distributing any products originally manufactured by Mary Kay that are beyond their shelf lives and/or expiration dates; and (3) using Mary Kay’s trademarks in any manner suggesting that Defendants are endorsed by, sponsored by, or otherwise affiliated with Mary Kay.

Now of course, we all know that TOP did not ever try to use Mary Kay’s trademarks in a way to suggest they were affiliated with MK or had any relationship whatsoever. We all know (Mary Kay included) that Touch of Pink only used the MK name to identify the genuine Mary Kay products that they were legally selling after having purchased the products from people who legally sold their products that they had legally purchased from MK.

This again raises the issue of how critical this case is to every consultant and inventory liquidator. If Mary Kay can stop Touch of Pink from doing what is legal, they can stop you too.This possibility is not far-fetched at all. It doesn’t have to be logical. It simply is what it is… a very bad verdict which would give Mary Kay even more control.

And there’s another serious issue raised in this motion Mary Kay’s lawyers have filed… Whether someone can use the word PINK... since that is often a color associated with Mary Kay.  Here it is from the motion:

This Court should enjoin Defendants from promoting, advertising, offering for sale,    selling, or otherwise distributing any product originally manufactured by Mary Kay using the names “Touch of Pink Cosmetics” or “MaryKay1Stop.” See Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d 188, 192 (5th Cir. 1998) (enjoining use of the infringing name “The Velvet Elvis”). Here, like in Elvis Presley Enterprises, the evidence at trial proved that Defendants chose the names “MaryKay1Stop” and “Touch of Pink” because those names suggest an affiliation with Mary Kay. With respect to “MaryKay1Stop,” Ms. Weber admitted that she was “trading on the recognition and the valuable goodwill” of the registered Mary Kay trademarks. App. at 55 (Tr. at 491:16-18). With respect to the name “Touch of Pink,” Ms. Weber conceded that people “associate pink with Mary Kay.” App. at 57 (Tr. at 495:21-23). This Court should enjoin Defendants from using Mary Kay’s trademarks in connection both trade names.

How far could a ruling about the use of the word “pink” go? Who knows, but it’s an interesting issue to discuss.

And Mary Kay includes in its motion a laundry list of things that Touch of Pink should be prohibited from doing (which will essentially put them out of business) which include:

  • using Mary Kay’s trademarks in any advertising, newsletters, or coupons except to identify the name of the products for sale;
  • using Mary Kay’s catalogs, consultant stickers, sales aids, or any other Section 2 products in connection with the sale of Mary Kay’s products;
  • using any portion of Mary Kay’s product descriptions to describe the products for  sale on Defendants’ website;
  • purchasing keywords containing Mary Kay’s trademarks except to identify the specific products for sale by name;
  • representing to consumers that products not currently in Defendants’ inventory are  on “backorder;”
  • representing to consumers that if they “need products that have future expiration dates” that they should “contact [their] local Mary Kay consultant to purchase those products;”
  • representing to consumers that Defendants “offer an outlet to reduce [their] slow  moving product;”
  • representing to consumers that Amy L. Weber, or any Touch of Pink employee, is a current or former Independent Beauty Consultant;
  • representing to consumers that Touch of Pink “has been established by former Mary Kay   consultants who are assisting consultants liquidate their inventory;”
  • representing to consumers that Touch of Pink provides “a place for consultants and consumers   to locate hard to find and retired product or even new Mary Kay items at a great discount;”
  • representing to consumers and Independent Beauty Consultants that “if your product is less than 12 months old, you can send them back to Mary Kay Inc. for 90% of wholesale;”
  • representing to consumers that Touch of Pink is a “one stop shop” for all of aconsumer’s Mary  Kay needs;
  • representing to consumers that Touch of Pink carries authentic products from  former consultants that have never been tested or used; and
  • using Mary Kay’s marks in any other manner likely to cause confusion regarding Mary Kay’s sponsorship or affiliation of Defendants’ future business

Did you catch the one about prohibiting TOP from telling consultants they can return inventory to Mary Kay for 90% of their purchase price?