Miami Lawyers Crunch Hard Candy Cosmetics Infringement Claims
The cosmetics maker asked the court to award treble damages in a lawsuit with a potential price tag of $11.4 million for Anastasia Beverly Hills.
February 16, 2018 at 01:30 PM
5 minute read
Mark A. Romance jokes he had a secret weapon — his teenage daughter — who helped him understand fierce consumer loyalty to a California makeup brand and win a defense verdict in an eight-figure trademark infringement and unfair competition case.
Romance was part of a defense team of two Miami attorneys and a Texas lawyer, who beat back a lawsuit seeking to disgorge $3.8 million in profits from California-based cosmetics boutique Anastasia Beverly Hills.
Newport Beach, California-based Hard Candy LLC asked the court to award treble damages in a suit that potentially might have cost Anastasia $11.4 million in Miami federal court.
Romance, a Richman Greer Miami shareholder, worked with colleague Nate Edenfield and Austin, Texas, lawyer Travis Wimberly of Pirkey Barber for the defense.
Their client, Anastasia Beverly Hills, is a prestige cosmetics brand marketed with help from Kim Kardashian and other celebrities. It sells in high-end stores, including Sephora and Nordstrom, and has a social media following of 16.1 million on Instagram.
One of its customers is a high school senior, who on drives to school helped her lawyer-father understand how highlighter could multitask as blush and that Anastasia Beverly Hills cosmetics were unlike all others when it came to style and quality.
“She was my secret-weapon research assistant,” Romance quipped. “We felt confident in our position because the whole issue was whether there was likely to be confusion.”
The case turned on the name of a makeup shade in a 2015 Anastasia product, the Gleam Glow Kit. The kit is a $40 compact with four highlighter shades called Mimosa, Crushed Pearl, Starburst and — the color at the center of the dispute — Hard Candy.
Hard Candy LLC, which holds the rights to 14 federally registered marks, sued Anastasia, alleging the rival makeup company infringed on its trademark by using the Hard Candy name and engaged in unfair competition under the Lanham Act and common law.
To prevail in court, Hard Candy had to prove Anastasia's product name would cause confusion among consumers.
For the defense team, victory hinged on showing otherwise.
Hard Candy and its predecessors have used the name since 1995 and licenses the mark to a third-party for lipstick, nail polish, eye shadow, bronzer, other cosmetics and eyewear sold exclusively through Walmart retail stores and website. The company had retail sales of $59.9 million in 2015, according to court documents.
“It seems so simple, like a simple makeup case, but the legal issues are not so simple,” said Romance, whose team succeeded on a motion to strike Anastasia's demand for a jury trial, then shifted attention to a more nuanced discussion. “The real issue is not whether or not you own the trademark rights. That's important, but the real issue is whether the use of the trademark creates confusion.”
Anastasia Beverly Hills sold about 250,000 Gleam makeup kits in nine months beginning in September 2016 for a profit of about $3.8 million.
Plaintiffs in trademark infringement suits often seek two remedies: damages for lost revenue and an injunction against the party misusing their property. Hard Candy sought neither but argued it should be the one to reap the Gleam kit profits and sought to triple that amount under the Lanham Act.
Its strategy proved to be a misstep. By not seeking damages, the defense argued the company presented a case in equity as opposed to a case at law and was therefore no longer legally entitled to a jury trial.
U.S. District Judge Kathleen M. Williams agreed and presided over a three-day bench trial before ruling for the defense.
“Our theory was that they really weren't harmed, and that the sale of this kit didn't cause them any harm,” Romance said. “If it was causing harm, they would have tried to stop the sale through an injunction or sought damages. Neither one of those two things occurred.”
Coffey Burlington president Kevin Kaplan, partner Gabriel Groisman and associate Frances Blake represented Hard Candy.
The judge praised the work of both legal teams before finding no likelihood of confusion and no intention by Anastasia Beverly Hills to confuse consumers.
“I appreciated the professionalism and the caliber of the advocacy that was engaged in by both parties,” Williams said at a Feb. 2 hearing. “I have to say throughout the case, the record, and when I had you before me, the presentations by the lawyers, written and oral, were excellent. And I commend both sides and thank you for engaging in the quality of lawyering that makes my job not always easier, but more of a pleasure.”
Case: Hard Candy v. Anastasia Beverly Hills
Case No.: 16-CV-21203
Description: Trademark infringement
Filing date: April 5, 2016
Verdict date: Feb. 6, 2018
Judge: U.S. District Judge Kathleen Williams
Plaintiffs attorneys: Kevin Kaplan, Gabriel Groisman and Frances Blake, Coffey Burlington, Miami
Defense attorneys: Mark A. Romance and Nathaniel M. Edenfield, Richman Greer, Miami, and Travis Wimberly, Pirkey Barber, Austin,Texas
Verdict: For the defense
This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.
To view this content, please continue to their sites.
Not a Lexis Subscriber?
Subscribe Now
Not a Bloomberg Law Subscriber?
Subscribe Now
NOT FOR REPRINT
© 2025 ALM Global, LLC, All Rights Reserved. Request academic re-use from www.copyright.com. All other uses, submit a request to [email protected]. For more information visit Asset & Logo Licensing.
You Might Like
View AllFlorida Retention Ponds Scrutinized in Lawsuit After Latest Child Drowning
Art of the Settlement: Trump Attorney Reveals Strategy in ABC Lawsuit
Trending Stories
- 1Restoring Trust in the Courts Starts in New York
- 2'Pull Back the Curtain': Ex-NFL Players Seek Discovery in Lawsuit Over League's Disability Plan
- 3Tensions Run High at Final Hearing Before Manhattan Congestion Pricing Takes Effect
- 4Improper Removal to Fed. Court Leads to $100K Bill for Blue Cross Blue Shield
- 5Michael Halpern, Beloved Key West Attorney, Dies at 72
Who Got The Work
Michael G. Bongiorno, Andrew Scott Dulberg and Elizabeth E. Driscoll from Wilmer Cutler Pickering Hale and Dorr have stepped in to represent Symbotic Inc., an A.I.-enabled technology platform that focuses on increasing supply chain efficiency, and other defendants in a pending shareholder derivative lawsuit. The case, filed Oct. 2 in Massachusetts District Court by the Brown Law Firm on behalf of Stephen Austen, accuses certain officers and directors of misleading investors in regard to Symbotic's potential for margin growth by failing to disclose that the company was not equipped to timely deploy its systems or manage expenses through project delays. The case, assigned to U.S. District Judge Nathaniel M. Gorton, is 1:24-cv-12522, Austen v. Cohen et al.
Who Got The Work
Edmund Polubinski and Marie Killmond of Davis Polk & Wardwell have entered appearances for data platform software development company MongoDB and other defendants in a pending shareholder derivative lawsuit. The action, filed Oct. 7 in New York Southern District Court by the Brown Law Firm, accuses the company's directors and/or officers of falsely expressing confidence in the company’s restructuring of its sales incentive plan and downplaying the severity of decreases in its upfront commitments. The case is 1:24-cv-07594, Roy v. Ittycheria et al.
Who Got The Work
Amy O. Bruchs and Kurt F. Ellison of Michael Best & Friedrich have entered appearances for Epic Systems Corp. in a pending employment discrimination lawsuit. The suit was filed Sept. 7 in Wisconsin Western District Court by Levine Eisberner LLC and Siri & Glimstad on behalf of a project manager who claims that he was wrongfully terminated after applying for a religious exemption to the defendant's COVID-19 vaccine mandate. The case, assigned to U.S. Magistrate Judge Anita Marie Boor, is 3:24-cv-00630, Secker, Nathan v. Epic Systems Corporation.
Who Got The Work
David X. Sullivan, Thomas J. Finn and Gregory A. Hall from McCarter & English have entered appearances for Sunrun Installation Services in a pending civil rights lawsuit. The complaint was filed Sept. 4 in Connecticut District Court by attorney Robert M. Berke on behalf of former employee George Edward Steins, who was arrested and charged with employing an unregistered home improvement salesperson. The complaint alleges that had Sunrun informed the Connecticut Department of Consumer Protection that the plaintiff's employment had ended in 2017 and that he no longer held Sunrun's home improvement contractor license, he would not have been hit with charges, which were dismissed in May 2024. The case, assigned to U.S. District Judge Jeffrey A. Meyer, is 3:24-cv-01423, Steins v. Sunrun, Inc. et al.
Who Got The Work
Greenberg Traurig shareholder Joshua L. Raskin has entered an appearance for boohoo.com UK Ltd. in a pending patent infringement lawsuit. The suit, filed Sept. 3 in Texas Eastern District Court by Rozier Hardt McDonough on behalf of Alto Dynamics, asserts five patents related to an online shopping platform. The case, assigned to U.S. District Judge Rodney Gilstrap, is 2:24-cv-00719, Alto Dynamics, LLC v. boohoo.com UK Limited.
Featured Firms
Law Offices of Gary Martin Hays & Associates, P.C.
(470) 294-1674
Law Offices of Mark E. Salomone
(857) 444-6468
Smith & Hassler
(713) 739-1250