Empress Hair Care filed a lawsuit on January 10 in United States District Court of the Southern District of New York alleging trademark infringement and unfair competition. The Texas-based company, specializing in hair products for African American women, alleges Combs’s Sean John Clothing Company ignored its registered trademark of “empress” by using “empress” as the name of its newest women’s fragrance.
Empress Hair Care stated in its the lawsuit that Sean John Clothing had knowledge of its trademarks, since a representative of the company offered to buy the rights to the trademark in February 2010 for the right to use “empress” as the name of its newest scent. Empress Hair Care rejected this offer because they feared market confusion since both companies reach a similar audience. After the offer was rejected, lawyers for Sean John Clothing tried to register “Empress Sean John”, but the application was rejected.
Empress Hair Care will be successful in its suit if the court finds that Combes’ company infringed on its registered trademark. Under the Lanham Act, the test for trademark infringement is the “likelihood of confusion” among consumers. 15 U.S.C. §§ 1051–1127. The Ninth Circuit developed an eight-factor test that involves weighing the different factors to determine whether consumer confusion exists. AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). The strength of the mark, proximity of the goods, and similarity of the marks are three of the more important factors when determining if a trademark causes consumer confusion, but courts also considers evidence of actual confusion, marketing channels used, sophistication of the products, defendant’s intent, and likelihood of expansion of the product lines.
There is no combination of factors or one factor that is dispositive, which makes it difficult to predict if a court will find consumer confusion that constitutes trademark infringement. A court could find the goods proximate since hair care products and fragrances are similar products or part of the same category of cosmetics. Here the mark, “empress”, also names products that are used and targeted to the same audience. The court might also consider the defendant’s intent. It is unknown if Combs’s company had an intent of causing consumer confusion when it named its fragrance, but the from fact they knew “empress” was a registered trademark belonging to the plaintiff, intent could be inferred.