They say that beauty is only skin deep, but globally the beauty industry is growing exponentially and only getting stronger with an estimated value of $511 billion in 2021, up from $480 billion in 2020. New brands are appearing in the skincare and makeup space all the time, many of which are owned by actors, musicians and other celebrities, including Kylie Jenner’s Kylie Cosmetics and Rihanna’s Fenty Beauty. Arguably, one of the biggest celebrity skincare brands right now is Kim Kardashian’s SKKN BY KIM brand. As we have seen at the U.S. Trademark Office (“USPTO”), the Kardashian clan has been frontrunners in celebrity branding and are well aware of the importance of protecting their famous names. There is nothing the Kardashian clan love more than another trip to the USPTO, and there is no stopping Kim Kardashian in her efforts to federally register the mark SKKN BY KIM and to maintain her continued use of this name on her heavily promoted (and successful) skincare line. Since Kim’s filing of 19 trademark applications of SKKN BY KIM in the spring of 2021 under her company Kimsaprincess, Inc, of California, we have been keeping up with the trademark drama. The status of the now 20 pending applications along with Kim’s ongoing battles for her right to coexist with SKKN+ of Beauty Concepts are presented below
Status of Kim’s 19 Applications of SKKN BY KIM, filed on March 30, 2022
| MARK | APPLICATION NO. | GOODS/SERVICES | ||
| SKKN BY KIM* |
[expressly abandoned on 9/10/2021] |
Beauty salon services; skincare services; nail salon services; hair salon services; health and beauty spa services, namely, cosmetic face and body care (Class 44) | ||
| SKKN BY KIM* | 90613170
[disclaimer requested of the term SKIN and suspended based on earlier filed application of SKKN+ by Beauty Concepts and pending Opposition] |
Fragrances; eau de parfum; eau de toilette; perfumes; hair care preparations; hair styling preparations; non-medicated skin care preparations; skin moisturizers; skin lotions; skin creams; skin cleansers; skin toners; facial scrub; body scrubs; non-medicated skin care preparation, namely, facial mists; non-medicated skin care preparation, namely, skin serums; skin masks; non-medicated skin care preparation, namely, facial balms; facial oils; body oils; skin care preparations, namely, skin peels; body powders; bath and shower gels; bubble bath; deodorant for personal use; lip balm; lip gloss; nail polish; nail polish remover; nail care preparations; cosmetics; cosmetic preparations; room fragrances; air fragrance reed diffusers; scented oils; essential oils; nail art stickers; artificial eyelashes; eyelash adhesive; cleaning preparations; cleaning solutions and spray for cleaning makeup and skincare tools and accessories (Class 3) | ||
| SKKN BY KIM* | 90613548
[suspended on basis of prior pending application of SKKN+ and opposition to other applications filed by Beauty Concepts, since those proceedings could affect registrability] |
Retail store services featuring skin, cosmetics, hair, nail and beauty products, tools and accessories, fragrances, perfumes, candles, vitamins and supplements, home, bedroom and bathroom furnishings and accessories, and spa, bath and shower products, tools and accessories; arranging and conducting special events for commercial, promotional or advertising purposes; advertising services, namely, promoting the brands, goods and services of others; endorsement services, namely, promoting the goods and services of others; providing information about commercial business and commercial information via the global computer network; advertising, marketing and promotion services (Class 35) | ||
| SKKN BY KIM | 90613526
[subject of opposition following publication filed by Beauty Concepts on 12/27/2021] |
Bath mats; rugs; floor mats; floor coverings; wallpaper; personal exercise mats (Class 27) | ||
| SKKN BY KIM | 90613510
[subject of opposition following publication filed by Beauty Concepts on 12/27/2021]
|
Hair accessories, namely, Hair barrettes, Hair bands, Hair bows, Hair clips, Hair ties; Hair ornaments in the form of combs, Hair pins, Hair scrunchies, Hair chopsticks, Hair twisters and Hair wraps; Hair extensions; Ornamental novelty pins (Class 26) | ||
| SKKN BY KIM | 90613501
[subject of opposition following publication filed by Beauty Concepts on 12/27/2021] |
Shower caps; Belts; Bottoms as clothing; Coats; Dresses; Footwear; Gloves; Headbands; Headwear; Jackets; Loungewear; Scarves; Sleepwear; Socks; Swimwear; Tops as clothing; Undergarments (Class 25) | ||
| SKKN BY KIM |
[subject of opposition following publication filed by Beauty Concepts on 7/15/2022] |
Towels; wash cloths; bath mitts; shower curtains and liners; textiles for home furnishings, namely, household linens, bath linens, bed linens, kitchen linens and table linens; drapery; afghans; throws; comforters; bed blankets (Class 24) | ||
| SKKN BY KIM | 90613479
[suspended based on earlier-filed application of SKKN+ by Beauty Concepts] |
Sponges used for applying make-up; makeup sponge blenders, namely, sponges used for blending make-up; hair brushes; electrically heated hair brushes; hair combs; makeup brushes; applicator wands for applying make-up; power-operated brush used to clean and exfoliate the skin; hand-operated brush used to clean and exfoliate the skin; applicator wands for applying toners, serums, lotions and creams to the skin; applicators sold empty for applying toners, serums, lotions and creams to the skin; electric aromatherapy diffusers; bath products, namely, body sponges and loofah sponges; bathroom caddies for household use; bath accessories, namely, cup holders, toothbrush holders, toilet paper holders, soap dishes and soap dispensers; wastebaskets; trays for domestic purposes; household containers for storing and organizing cosmetics, cosmetics accessories, skincare and skincare accessories; baskets for household purposes; bowls; candle holders; containers for household use; exfoliating mitts; eyelash combs; eyelash brushes; serving ware for serving food and drinks; dishes; beverageware; buckets; coasters, not of paper or textile (Class 21) | ||
| SKKN BY KIM | 90613460
[subject of opposition following publication filed by Beauty Concepts on 7/15/2022] |
Mirrors; vanity mirrors; personal contact mirrors; furniture; picture frames; pillows; Interior window blinds; interior window shades; non-metal novelty license plates; cribs; baby bouncers; baby changing mats; baby changing tables; baby walkers; mattresses, mattress toppers; cushions; nursing pillows; foot stools; nonmetal and non-paper containers for storage or transport; playpens; play yards (Class 20) |
| SKKN BY KIM |
[subject of opposition following publication filed by Beauty Concepts on 7/15/2022] |
Toiletry bags sold empty; toiletry cases sold empty; cosmetics bag sold empty; cosmetic carrying cases sold empty; tote bags; all-purpose carrying bags; back packs; handbags; tote bags; purses; wallets; bags for carrying babies’ accessories; diaper bags; athletic bags; duffle bags; umbrellas (Class 18) | ||
| SKKN BY KIM | 90613408
[published for opposition on 7/26/2022…opposition deadline of 8/25/2022] |
Calendars; books, magazines and periodicals in the fields of music, entertainment, children’s entertainment and popular culture; decals; photographs; photo albums; pictures; posters; scrap books; stationery; stickers and transfers; writing utensils; collectible trading cards (Class 16) | ||
| SKKN BY KIM | 90613378
[outstanding refusal based on two registrations of the marks (1) BY KIM and (2) SKIN and suspended on basis of earlier filed application of SKKN+ of Beauty Concepts] |
Clocks; jewelry; watches; keychains; Hair ornaments being jewelry for use in the hair (Class 14) | ||
| SKKN BY KIM | 90613345
[subject of opposition following publication filed by Beauty Concepts on 1/26/2022] |
Hair dryers; hair dryer diffusers; lamps; lighting fixtures; multi-purpose, electric countertop food preparation apparatus for cooking, baking, broiling, roasting, toasting, searing, browning, barbecuing and grilling food; appliances for domestic use, namely, temperature controlled wine cellars; convection ovens; microwave ovens (Class 11) | ||
| SKKN BY KIM | 90613297
[expressly abandoned after office action referencing Beauty Concepts’ earlier filed application of SKKN+ |
Electrically-powered apparatus for treating skin by applying sonic vibrations to the skin; cosmetic apparatus using ultrasound for performing aesthetic skin treatment procedures; facial toning machines for cosmetic use; foam massage rollers; facial massagers; body massagers (Class 10) | ||
| SKKN BY KIM | 90613269
[published for opposition on 7/26/2022; opposition deadline of 8/25/2022] |
Downloadable computer application software for sharing information on social media; downloadable computer software for use in playing, organizing, downloading, transmitting, manipulating, and reviewing audio and multimedia files; downloadable computer software for use in the delivery, distribution and transmission of digital music and entertainment- related audio and multimedia content; downloadable computer software for creating searchable databases of information and data for peer-to-peer social networking databases; downloadable computer software for enabling transmission, storage, sharing, collection, editing, organizing and modifying media content; downloadable computer programs for video and computer games; electronic publications, namely, magazine and periodical featuring entertainment, musical entertainment, popular culture and variety of topics recorded on computer media; digital media, namely, downloadable audio and video recordings featuring entertainment, musical entertainment, popular culture and variety of topics; downloadable ring tones, graphics and music via a global computer network and wireless devices; downloadable computer software featuring digital trading cards; eyewear; sunglasses; eyewear cases; sunglass cases; mobile phones; cases for mobile phones; fitted plastic films known as skins for covering and protecting electronic apparatus, namely, mobile phones; computers (Class 9) | ||
| SKKN BY KIM | 90613243
[refusal based on cited registration of the mark SXKN in Class 8 and suspended based on expungement action of cited registration] |
Curling irons; flat irons; electric hand held styling irons; manicure implements, namely, nail files, nail clippers, cuticle pushers, tweezers, nail and cuticle scissors, and nail buffers; eyelash curlers; hand-operated cooking and kitchen appliances for dicing, mincing, slicing, and chopping food; hand-operated cooking and kitchen appliance for peeling food, namely, hand-operated vegetable peelers and hand-operated fruit peelers; hand-operated cooking and kitchen appliance for tenderizing food, namely, a kitchen mallet; hand-operated food processor; hand-operated grilling appliances, namely, meat pokers in the nature of a pronged instrument for holding meat; flatware, namely, knives, forks and spoons; table cutlery, namely, knives, forks and spoons; knives, namely, kitchen knives, filleting knives, household knives, chef knives; blade sharpeners, namely, knife sharpeners; fire tongs; curling irons; flat irons; electric hand held styling irons (Class 8) | ||
| SKKN BY KIM* | 90613211
[disclaimer requested of the term SKIN and suspended based on earlier filed application of SKKN+ by Beauty Concepts and pending Opposition] |
Vitamins; dietary and nutritional supplements; nutritional supplement drinks in the form of liquid and powdered drinks; medicated lotions and creams for treating dermatological conditions; medicated dermatological preparations and substances; medicated hair care preparations; medicated mouthwashes and toothpaste; probiotic supplements; nutritional supplements; adhesive bandages (Class 5) | ||
| SKKN BY KIM | 90613195
[suspended based on earlier filed application of SKKN+ by Beauty Concepts and pending Opposition |
Candles (class 4) |
*Disclaimer of SKKN in Applications covering classes 3, 5, 10, 21 and 35
Upon examination in the USPTO, the examiner requested a disclaimer of the word SKIN on descriptiveness grounds for goods and services relating to skincare. Per USPTO practice, a novel spelling or intentional misspelling will still be found descriptive if purchasers will perceive the different spelling as the equivalent of the descriptive word.
Unbeknown to Kim and her attorney on the March 30, 2021 filing date of the above 19 applications in the name of Kimsaprincess Inc., Beauty Concepts LLC of Washington D.C. had filed an application for the mark 
with the USPTO just two days earlier. Not only does Beauty Concepts’ application have an earlier filing date than the applications of SKKN BY KIM, but also alleges a date of first use of the mark SKKN+ as early as August 1, 2018 in connection with skin care salon services. This use was based on a single beauty salon located in Washington, D.C. at the time of the filing. A copy of the screenshot of the website of https://www.skknplus.com/ submitted in support of the use of SKKN+ by Beauty Concepts is reproduced below:
The details of Beauty Concepts’ pending application filed on March 28, 2021, along with its two later filed applications of the mark SKKN+ [word mark only] are shown below:
| MARK | APPLICATION NO. | FILING DATE | SERVICES |
|
SKKN+ |
90608147
[Suspended based on Kim’s priority application of the mark SKKN, filed in Jamaica on January 25, 2022 ]. Based on first use of the mark since as early as 8/01/2018 |
March 28, 2021, Applicant Beauty Concepts LLC TA SKKN Plus | Skin care salon services care services; Beauty spa services; Skin care services; Beauty salon services (Class 44) |
| SKKN+ | 97476341
Based on first use of the mark in commerce in March, 2019 |
June 26, 2022
Applicant: Beauty Concepts LLC |
Retail store services featuring skincare products; online retail store services featuring skincare products (Class 35) |
| SKKN+ | 97476345
Based on first use of the mark since as early as 8/01/2018 |
June 26, 2022 Applicant Beauty Concepts LLC | Skin care salon services care services; Beauty spa services; Skin care services; Beauty salon services; esthetician services (Class 44) |
Beauty Concepts’ Notice letter of July, 2021
On July 20, 2021, Beauty Concepts, a Washington, D.C. LLC filed a new entity for doing business in the state of New York in the name of SKKN PLUS LLC with the Department of State. See below. The next day SKKN+ salon owner Cyndie Lunsford sent Kardashian a cease and desist letter asserting her prior rights in the 
moniker.
Less than two weeks prior to the July 21, 2021 notice letter, Kimsaprincess had filed an application asserting a foreign priority claim pursuant to Section 44(d) based on an application of the mark SKKN filed in Jamaica on January 25, 2021. Since the U.S. application of SKKN was within the six month period following the foreign filing, the new application of SKKN received the earlier Jamaican filing date of January 25, 2021. The details of the US application are:
| Word Mark | SKKN |
| Goods and Services | IC 003. US 001 004 006 050 051 052. G & S: Perfumes; cosmetics; skin care preparations; hair care preparations; non-medicated body care preparations; skin toners; skin moisturizers; skin creams; skin lotions; skin cleansers; skin conditioners; skin foundations; skin soaps; skin clarifiers; skin masks; skin hydrators; skincare cosmetics; skin balms; skin make-ups; cosmetic skin enhancers; essences for skin care; oils for the skin; wipes, tissues and cloths impregnated with a skin cleanser; exfoliants for the care or cleaning of the skin; cosmetics for the treatment of dry skin; essential oils for the care of the skin |
| Standard Characters Claimed | |
| Mark Drawing Code | (4) STANDARD CHARACTER MARK |
| Serial Number | 90819462 |
| Filing Date | July 9, 2021 |
| Current Basis | 1B |
| Original Filing Basis | 1B;44D |
| International Registration Number | 1613648 |
| Owner | (APPLICANT) Kimsaprincess Inc. CORPORATION CALIFORNIA 9255 Sunset Blvd, FL 2 West Hollywood CALIFORNIA 90069 |
| Attorney of Record | Jennifer Ko Craft |
| Priority Date | January 25, 2021 |
| Type of Mark | TRADEMARK |
| Register | PRINCIPAL |
While not all owners of foreign trademark applications are eligible for a priority filing date under Section 44(d), Kim’s application met the threshold requirements. The two threshold requirements for taking advantage of Section 44(d) are:
- The owner’s “country of origin” must be a party to a treaty/agreement with the United States that provides a right of priority to United States nationals. Section 1002.04 of the Trademark Manual of Examining Procedure (TMEP) defines “country of origin,” but it’s generally considered (1) the country in which the owner has an industrial or commercial establishment, (2) the country in which the owner is domiciled, or (3) the country of which the owner is a national. The TMEP also lists the foreign countries with which the U.S. has the requisite treaties/agreements.
- The foreign trademark application itself must have been filed in a country that’s a party to a treaty/agreement with the United States that provides a right of priority to United States nationals.
Even if the owner of a foreign trademark application meets the two threshold requirements discussed above, the following requirements must also be satisfied in order to receive a priority filing date under Section 44(d):
- The foreign trademark application must be the owner’s first application filed in any treaty country for the same trademark and for the same products/services, OR the first-filed application has been withdrawn, abandoned, or otherwise disposed of without having any rights outstanding and has not served as a basis for claiming a right of priority.
- The claim of priority must be made within six months after the filing date of the foreign trademark application.
- The owner of the foreign trademark application must provide a verified statement that it has a bona fide intention to use the mark in commerce.
- The trademark in the Section 44(d) application must be identical to the trademark in the foreign trademark application.
- The products/services listed in the Section 44(d) application cannot be broader than the products/services listed in the foreign trademark application.
Since the Jamaican application was the first application filed by Kimsaprincess for the mark SKKN by itself and was filed with the USPTO within six months of the foreign filing date, the U.S. application of SKKN met the threshold of receiving the earlier filing date of January 25, 2021 giving Kim a 60-day priority over Beauty Concepts’ pending application of 
.
Upon examination of Beauty Concepts’ application of SKKN+, Kim’s priority application of SKKN was referenced in the supplemental Office Action issued on November 12, 2021 along with requesting a disclaimer of the alleged descriptive term SKIN. Beauty Concepts’ application was suspended from further action pending Kim’s priority filing of SKKN along with a resolution of the oppositions filed on behalf of Beauty Concepts.
Rather than requesting a disclaimer of the term SKIN as was done in Beauty Concepts’ application, the trademark examiner refused registration of Kim’s priority application of SKKN on descriptiveness grounds. Since the entire mark consisted of the term SKKN, Kim could not simply disclaim the term SKIN apart from the mark absent an additional registrable element. Contrast this with the disclaimer request in the applications of SKKN BY KIM and SKKN+. Kim’s application of SKKN remains suspended pending the outcome of Beauty Concepts’ oppositions.
Oppositions filed by Beauty Concepts
To date, Beauty Concepts has filed three opposition proceedings with the Trademark Trial and Appeal Board (“TTAB”) with several more likely on the horizon given the recent publication of additional applications of SKKN BY KIM. These oppositions filed on December 27, 2021, January 6, 2022, and July 15, 2022, essentially assert Beauty Concepts’ prior common law rights in SKKN+ in connection with skin care salon services since 2018 and allege a likelihood of reverse confusion between its mark SKKN+ and SKKN BY KIM. Beauty Concepts allege that the addition of the wording “BY KIM” does not distinguish Kim’s mark or otherwise obviate the likelihood of confusion. The TTAB will suspend these several oppositions pending the recently filed lawsuit against Kim and her company.
Beauty Concepts’ Federal lawsuit
Beauty Concepts makes similar arguments in its federal lawsuit filed on June 28, 2022 with the Eastern District of New York. The lawsuit brings claims for willful infringement of Beauty Concepts’ trademarks, reverse confusion, unfair competition, and civil conspiracy, alleging that Kim has deliberately disregarded Beauty Concepts’ superior rights to the “SKKN” mark and that the use of the SKKN BY KIM mark “will and have confused, misled, and deceived the general public and consumers into believing that Beauty Concepts manufactures, sells, sponsors, approves and/or licenses the Kardashian/Coty’s goods and services,” resulting in damage to Beauty Concepts’ SKKN+ mark.
Kim’s current use of SKKN BY KIM appears on her website https://skknbykim.com/ on a complete line of skincare with the SKKN BY KIM appearing directly on the packaging for the kids as seen below:
Moreover, Kim owns the domain name www.skkn.com which redirects purchasers to the www.skknbykim.com website. Kim has also claimed @skkn on social media platforms, all of which lead to her SKKN BY KIM Instagram, Tik Tok and Twitter accounts.
Due to the pending lawsuit, either party is able to make a motion to suspend the TTAB proceedings. To date, neither party has filed a motion to suspend with the TTAB. If Kim loses the TTAB dispute, she will be unable to obtain a trademark registration of the mark SKKN BY KIM, but may otherwise continue to use SKKN BY KIM and SKKN to market and sell her line of skin care products in the marketplace. However, if she loses the lawsuit in federal court, she may be forced to cease use of the mark entirely. Beauty Concepts is seeking both injunctive relief and damages in its complaint. If the court grants Beauty Concepts its desired relief, Kim will be forced to halt all sales of products under SKKN BY KIM until she ceases use of the term SKKN.
Although Kim maintains that she has done nothing wrong in continuing to market and sell her SKKN BY KIM branded cosmetics, no formal answer has been filed in response to the complaint.
It is a never ending drama of keeping up with the Kardashian trademark shenanigans and this former trademark examining attorney will try to stay up to date in the USPTO.
Donna L. Mirman is a former trademark examiner with the U.S. Patent and Trademark Office and currently counsels clients on brand selection, trademark enforcement and prosecution of trademarks in the U.S. Patent and Trademark Office.