A trademark infringement suit recently filed in Chicago federal court shows how it doesn’t pay to have the same initials as a reality TV queen. Kim Kardashian West has won the right to have the case against her newly launched cosmetics company transferred from Illinois to her home base of California.
A Danish makeup artist and cosmetics producer is accusing Kardashian West and her company, Kimsaprincess Inc., of promoting a similar-sounding product line that could potentially get consumers confused between the two brands. Kirsten Kjaer Weiss, who brands her own products with her name and initials, KW, filed the trademark suit in the Northern District of Illinois, claiming that Kardashian West’s KKW brand sounds too much like hers.
U.S. District Judge Robert M. Dow Jr. ruled that even though the suit was properly brought in Illinois because both companies’ products are sold in the Chicago area, the Central District of California is a more appropriate venue because that is where Kimsaprincess is based, and where key witnesses for the company are subject to jurisdiction. Both KW and KKW products are also sold in California. Weiss’s line is sold in retail stores, while Kardashian’s are sold only online.
Weiss launched her organic cosmetics and skincare line in 2010, through Kjaer Weiss LLC, which is based in New York. She had argued for the Southern District of New York as an alternate venue to Illinois.
Kardashian West’s Woodland Hills, the Calif.-based company launched the KKW Beauty cosmetics line this past June, manufactured and distributed by a company called Seed Beauty.
Weiss’s complaint claims she owns trademarks for her name and initials and that consumers could be misled into thinking the two brands are associated with each other. Her suit alleges trademark infringement and unfair competition under the federal Lanham Act and violation of the Illinois Uniform Deceptive Trade Practices Act, along with common-law claims.
Kimsaprincess moved to transfer the suit to California, which Dow granted. Factors a judge is to consider when deciding a motion to transfer venue include whether the transfer will serve the convenience of the parties and witnesses and the interests of justice, Dow wrote, quoting Hanover Insurance Co. v. Northern Building Co., 891 F. Supp. 2d 1019 (N.D. Ill. 2012).
Dow concluded that because neither of the parties or their companies resides in Illinois and key events leading up to the suit did not occur there, California was most appropriate because Kardashian West’s Kims’ princess and Seed Beauty are all based in the Central District.
“Records relevant to the development and marketing of the KKW Beauty products are located in California,” he wrote, “as are witnesses who have information about the development of the products.
“Because trademark infringement suits usually focus on the activities of the alleged infringer, and the alleged infringer, in this case, has no offices or employees in Illinois, this factor still slightly favors transfer to California where [d]efendant’s documents are located.”
The judge added that the inconvenience to Weiss in transferring the case to California does not outweigh the inconvenience to Kardashian West in litigating the case in Illinois, and the interests of justice require moving the case because civil cases go to trial in California in half the time they take in the Northern District of Illinois.
The case is Kristen Kjaer Weis v. Kimsaprincess Inc., No. 17 C 5471.
Super Lawyers named Illinois commercial law trial attorney Peter Lubin Super Lawyers and Illinois business dispute attorneys Patrick Austermuehle and Andrew Murphy Rising Stars in the Categories of Class Action, Business Litigation, and Consumer Rights Litigation. Lubin Austermuehle’s Illinois business trial lawyers have over thirty years of experience in litigating complex class action, copyright, noncompete agreement, trademark and libel suits, consumer rights and many different types of business and commercial litigation disputes. Our Wheaton and Naperville business dispute lawyers, civil litigation lawyers and copyright attorneys handle emergency business lawsuits involving copyrights, trademarks, injunctions, and TROS, covenant not to compete, franchise, distributor and dealer wrongful termination and trade secret lawsuits and many different kinds of business disputes involving shareholders, partnerships, closely held businesses and employee breaches of fiduciary duty. We also assist businesses and business owners who are victims of fraud. You can contact us by calling (630) 333-0333 or our toll-free number (833) 306-4933. You can also contact us online here.