Advertisement

July 22, 2014

David Can Beat Goliath in the Trademark World… Just Ask Mixed Chicks!

On November 2, 2012, a federal jury in the Central District of California awarded Mixed Chicks LLC, a beauty supply company for mixed-race women, www.mixedchicks.net, $839,535 in actual damages and $7,275,000 in punitive damages for willfully infringing the MIXED CHICKS® trademark and trade dress with its MIXED SILK line of products. Mixed Chicks LLC, v. Sally Beauty Supply LLC, et al., SACV11-00452 AG (FMOx) (C.D.C.A. 2012). On November 29, the infringer Sally Beauty Supply LLC agreed to a settlement of $8.5 million, which is larger than the actual jury award. It did so in order to avoid further hearings on and awards to Mixed Chick of its’ attorneys’ fees and of Sally Beauty’s profits as a result of its infringing activity.

Mixed Chicks LLC, a relatively small company founded in 2004 with approximately $5 million in annual revenue and approximately 15 full-time staff members, http://www.inc.com/magazine/201202/case-study-the-rival-mixed-chicks-sally-beauty.html,  filed suit in March 2011 against Sally Beauty Supply LLC and related companies for federal and state trademark infringement, trade dress infringement, false designation of origin, and unfair competition claiming that Sally Beauty’s line of MIXED SILK hair care products infringed both the MIXED CHICKS ® trademark as well as the overall appearance of that line of products. The Complaint also claimed that Sally had “programmed or caused the search engine on the Sally Beauty website to operate in [a] manner to cause confusion or mistake, or to deceive as to the origin of the Mixed Silk hair care products with the intent to benefit from Mixed Chicks’ reputation and goodwill,” Apparently, when consumers searched “mixed chicks” on the Sally Beauty website only MIXED SILK products results would appear. Mixed Chicks claimed that the wrongful activity was willful and with the intent to benefit from the goodwill and reputation in the mixed race hair care product market that Mixed Chicks had developed through their specialized high-quality hair care products. 

Sally Beauty, which began with one store in 1964, is the world’s largest retailer of professional beauty supplies. It owns and operates more than 2700 Sally Beauty Supply stores worldwide, including every state in the United States, and in Puerto Rico, Canada, Mexico, Germany, the United Kingdom, Ireland, Belgium, France, and Spain. http://www.sallybeauty.com/About-Sally-Beauty/PAGE_MEET_SALLY,default,pg.html  It also sells its products online at www.sallybeauty.com. It reported net sales in 4Q12 of $883 million and  FY2012 of over $3.5 billion. http://investor.sallybeautyholdings.com/phoenix.zhtml?c=203305&p=irol-newsArticle&ID=1759070&highlight=

Although the MIXED SILK product line is no longer sold and cannot be found on the Sally Beauty website, information about both the MIXED SILK and MIXED CHICKS lines of products and a view of some of their respective packaging can be found at http://curlychellez.blogspot.com/2011/02/mixed-chicks-vs-mixed-silk.html.

The decision to proceed with a full jury trial in this case could not have been easy for Mixed Chicks given the size and reputation of its formidable opponent. However, Goliath does not always win, particularly if the facts demonstrate efforts to undermine and injure a competitor through illegal and bad-faith conduct. Thus, if you are a David, don’t shy away from seeking redress for clear wrongs against your company, its brands, its reputation, and its goodwill. If the facts are on your side, you should make every effort to ensure that your assets are properly protected from a competitor’s overzealous reach. 

©1994-2014 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.

About the Author

Susan Neuberger Weller, Trademark Attorney, Mintz Levin, Law Firm
Member

Susan is a member in the firm’s Washington, D.C. office and has managed the firm's trademark practice for over 10 years. For over 25 years, her practice has involved all aspects of intellectual property and related corporate business transactions, with a particular emphasis on domestic and international trademark and copyright searching, prosecution, enforcement, counseling, and litigation. She specializes in trademark, copyright, domain name, trade dress, and related areas of Internet, e-commerce, unfair competition, customs, and advertising law, as well as intellectual...

202-585-3510

Boost: AJAX core statistics

Legal Disclaimer

You are responsible for reading, understanding and agreeing to the National Law Review's (NLR’s) and the National Law Forum LLC's  Terms of Use and Privacy Policy before using the National Law Review website. The National Law Review is a free to use, no-log in database of legal and business articles. The content and links on www.NatLawReview.com are intended for general information purposes only. Any legal analysis, legislative updates or other content and links should not be construed as legal or professional advice or a substitute for such advice. No attorney-client or confidential relationship is formed by the transmission of information between you and the National Law Review website or any of the law firms, attorneys or other professionals or organizations who include content on the National Law Review website. If you require legal or professional advice, kindly contact an attorney or other suitable professional advisor.  

Some states have laws and ethical rules regarding solicitation and advertisement practices by attorneys and/or other professionals. The National Law Review is not a law firm nor is www.NatLawReview.com  intended to be  a referral service for attorneys and/or other professionals. The NLR does not wish, nor does it intend, to solicit the business of anyone or to refer anyone to an attorney or other professional.  NLR does not answer legal questions nor will we refer you to an attorney or other professional if you request such information from us. 

Under certain state laws the following statements may be required on this website and we have included them in order to be in full compliance with these rules. The choice of a lawyer or other professional is an important decision and should not be based solely upon advertisements. Attorney Advertising Notice: Prior results do not guarantee a similar outcome. Statement in compliance with Texas Rules of Professional Conduct. Unless otherwise noted, attorneys are not certified by the Texas Board of Legal Specialization, nor can NLR attest to the accuracy of any notation of Legal Specialization or other Professional Credentials.

The National Law Review - National Law Forum LLC 4700 Gilbert Ave. Suite 47 #230 Western Springs, IL 60558  Telephone  (708) 357-3317 If you would ike to contact us via email please click here.