For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Sunday, 4 August 2013

Battle of the Honest Folks: Celebrity v Toddler

The heat of Summer is causing emotions to boil in connection to a fight brewing on social media, triggered by a cease and desist letter and a trade mark opposition. The question at the heart of the dispute? Which of the dueling brands is truly “honest”.  [Katpat Jenny Glatzer!]


Jessica Alba: face
of The Honest Co.
The Honest Company (“Honest Co.”)  is a consumer products brand that sells non-toxic, eco-friendly baby products, bath and body products, vitamins and related goods marketed towards parents who are concerned for the health and safety of their children. Honest Co. was co-founded, and is co-owned, by Hollywood starlet Jessica Alba. Ms Alba has also published a book called The Honest Life. The company and book are described on Honest Co.’s website as follows:
"As a new mom, Jessica Alba wanted to create the safest, healthiest environment for her family. But she was frustrated by the lack of trustworthy information on how to live healthier and cleaner—delivered in a way that a busy mom could act on without going to extremes. In 2012, with serial entrepreneur Brian Lee, seasoned consumer internet executive Sean Kane, and environmental advocate Christopher Gavigan, she launched The Honest Company, a brand where parents can find reliable information and products that are safe, stylish, and affordable. The Honest Life shares the insights and strategies she gathered along the way."
The Honest Toddler
Contrast this with The Honest Toddler (“Honest Toddler”), a popular, humorous Twitter feed written by Canadian mom Bunmi Laditan in the voice of her two-year old toddler.  Laditan also published a parenting book of the same name, and reportedly sold the television rights to Sex and the City producer Darren Star.


Initially, Honest Co. and Honest Toddler co-existed amicably. Honest Toddler even participated in an interview on Honest Co.’s website. However, once Honest Toddler filed a trade mark application with the USPTO (in class 41 for “providing a website featuring blogs and non-downloadable publications in the nature of articles and columns in the fields of entertainment and parenting”), Honest Co. requested that Honest Toddler withdraw its application and cease all activities that infringe upon Honest Co.'s established trade marks. Honest Co. claims it holds more than forty US trade mark registrations for the products mentioned above. It also has numerous other registrations and “intent to use” applications, which give it priority rights for five years for product categories that are in development, including baby and children’s apparel, youth home furniture and décor and baby care accessories and toys. In addition, Honest Co. holds two trade marks for a sub-brand name called Honestbaby. The Honestbaby trade marks are registered in the following categories:
Class 45 – "Information in the field of parenting concerning intrafamily relationships; Providing a web site featuring information about baby names to assist web users in learning about and in choosing names for babies; Providing advice and information on appropriate gifts for children; Providing fashion information; Providing information in the field of child safety."
Class 41 – "Information in the field of parenting concerning education of children; Information in the field of parenting concerning entertainment of children; Information on education; Providing an on-line computer database featuring information regarding exercise and fitness before and after pregnancy; News analysis and features distribution; News reporting services."
When Honest Toddler refused to withdraw its trade mark application, Honest Co. filed an opposition to the application with the USPTO. 


Honest Tea
So which brand is entitled to use the Honest moniker? Maybe both. Honest Co. launched its products in 2012, prior to the creation of Honest Toddler. Since its launch, Honest Co.'s products have received rave reviews and, bolstered by Ms Alba’s fame, have quickly gained popularity and a positive brand recognition. Thus, to the extent that the two brands’ activities occur in the same product or service trade mark categories, the Honest Co. has superior rights on the basis of its prior use and its registered trade marks.
However, it is possible that Honest Toddler could survive Honest Co.’s trade mark opposition because the word “Honest” as a trade mark is rather weak – it is somewhat descriptive of the quality of the trade mark owner’s offerings. In fact, other brands already use an Honest moniker without causing consumer confusion: Honest Tea, Honest Chips, and The Honest Kitchen pet food are just a few examples. The challenge for Honest Toddler would be showing that its activities are wholly distinct from, and not confusingly similar to, Honest Co.’s, despite the fact that they share the same consumer base and both combine the word “Honest” with a word related to children.  [As this Kat understands, an analysis under European and other foreign jurisdictions' laws would not take into account how unique a mark is. In the US, a trade mark is entitled to increasing levels of protection depending on whether it is (in order from least protected to most protected) generic, descriptive, suggestive, or arbitrary/fanciful. Would any readers care to comment on the analysis as it would be judged under the law of their home jurisdiction?]


Honest Co. may have been willing to co-exist with Honest Toddler if Honest Toddler hadn’t sought a US trade mark registration. But Honest Co., like any brand, couldn’t ignore a potentially confusing, competing brand seeking trade mark registration with the USPTO. For its part, Honest Toddler is unwilling to withdraw its trade mark application, and says it will fight the opposition. As a result, co-existence discussions between the brands have apparently broken down.
Honest Chips
In order to inform their consumer bases of the continuing legal challenges, each party has opted to engage its fan base online. Unfortunately, the emotionally charged social media spat is obscuring the legal questions at issue. Each brand’s Facebook pages, websites, blogs and Twitter feeds are filled with catty, negative assertions and accusations, some of which have made fans uncomfortable. Honest Toddler rallied its 250,000 Twitter followers to write emails and messages deriding Honest Co. for “bullying” Honest Toddler. Many of Honest Toddler’s fans level their criticism directly at Jessica Alba; their claims assert that Ms Alba is personally attacking a funny, hard-working mom who is trying to support her family. Supporters of Honest Co. point out that the company is merely trying to protect its brand, its reputation, and its trade marks, as well as protect its consumers from confusion.


The Honest Kitchen
Pet Food
The personal nature of the criticism leveled against Ms Alba highlights the risk for celebrities who leverage their fame to build a consumer products brand. In this Kat’s opinion, brand building is a double-edged sword for celebrities. A successful brand can be highly rewarding for both the celebrity’s wallet and reputation, but that success requires commitment; the celebrity must maintain an active involvement and leadership in the brand in order to exhibit authenticity and gain consumer trust. On the other hand, when the proverbial kitty litter hits the fan, disappointed and angry consumers blame the celebrity as though she and the brand are one and the same. Though Ms Alba is likely not directly involved in the legal action taken by Honest Co., she is receiving the lion’s share of the negative press generated by Honest Toddler's passionate consumer base.
Mike Mireles posted on IP Finance a thought-provoking blog on IP bullies in the world of charitable giving. He asks: “Do we need more ‘bullies’ [to protect their marks] and less shame” and public backlash as a result of a brand’s actions to protect its marks? It is a question well worth asking in this context as well. Charitable organizations have shied away from asserting their marks against infringers for fear of public repercussions. Similarly, celebrity brands must consider the impact such actions may have, not just on the brand’s image, but also on the celebrity’s personal reputation.


10 Celebrity Endorsement Deals Gone Wrong here
Celebrity Plastic Surgery Gone Wrong here
Celebrity Photo Shop Gone Wrong here

1 comment:

Anonymous said...

Let me be the first to say that under UK law the doctrine of Honest Concurrent Use would plainly be relevant!

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