Lovely Skin, Inc. v. Istar Skin Care Prods., LLC

To overcome the strong presumption of validity that Lovely Skin's registered trademark had not acquired distinctiveness at the time of registration required Ishtar to show more than evidence of third parties with similar business names and marks.

Opinion (Gruender): Lovely Skin, Inc. (“Lovely Skin”) sells skin care products through its website www.lovelyskin.com. Lovely Skin tried to obtain trademarks in “Lovely Skin” and “www.lovelyskin.com” but failed because their marks were merely descriptive. In 2005, Lovely Skin succeeded in registering a trademark with the United States Patent and Trademark Office (“PTO”) for “Lovely Skin” on the grounds that their mark had acquired distinctiveness through Lovely Skin’s substantially exclusive use. Two years later the PTO also registered the mark for “www.lovelyskin.com”. In 2005, Ishtar Skin Care Products, LLC (“Ishtar”) registered the domain name “www.livelyskin.com” and used it to sell their own skin care line. In 2010, Lovely Skin sued Ishtar. Ishtar argued that Lovely Skin’s marks had not acquired distinctiveness, and counterclaimed for the cancellation of Lovely Skin’s trademarks. The trial court found for Ishtar and canceled Lovely Skin’s marks. Lovely Skin appealed. The Eighth Circuit held that although Ishtar demonstrated that three different businesses had names or marks similar to Lovely Skin’s, Ishtar failed to show how those businesses were using those names or marks within the five years prior to Lovely Skin's registration. Because there is a strong presumption of validity for trademarks, the evidence did not adequately prove that Lovely Skin’s marks had not acquired distinctiveness through substantially exclusive use. The panel reversed the cancellation of Lovely Skin’s trademarks. REVERSED IN PART on the cancellation of the trademark registrations and AFFIRMED IN PART.