Sheree Cosmetics v. Jenner - Complaint

Case 1:18-cv-09673 Document 1 Filed 10/22/18 Page 1 of 23
IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF NEW YORK
Sheree Cosmetics LLC ) Court No.:

)
Plaintiff, )
vs. )
)
Kylie Jenner )
Kylie Cosmetics, LLC )
Kylie Jenner, Inc. )
Seed Beauty, LLC )
King Kylie Holdings, LLC )
)
Defendants
COMPLAINT
Sheree Cosmetics LLC, (“Plaintiff”) by its attorney, Anthony M. Verna III, Esq., hereby files the
following Complaint against Kylie Jenner, Kylie Cosmetics, LLC, Kylie Jenner, Inc., King Kylie
Holdings, LLC and Seed Beauty, LLC (“Defendants”).
NATURE OF THE ACTION
1. Plaintiff seeks injunctive relief and damages for acts of trademark infringement and
trade dress infringements that the Defendants engaged in in violation of the laws of
the United States and the State of New York.
2. In particular, this case concerns Defendants’ willful infringement of the Plaintiff’s

trademark in common law and applied for in the United States Patent and Trademark
Office, Plaintiff’s trade dress, and acts of false designation of origin and unfair
competition in use of selling Defendants’ cosmetics using Plaintiff’s branding and
design, passed off as Defendants’ own mark and creation, confusing consumers and
likely to confuse consumers.
3. Despite the intellectual property ownership of the Plaintiff, Defendants introduced the
cosmetics that Defendants sell with Plaintiff’s trademark and designs.
4. Defendants undertook this behavior without the consent of the Plaintiff and
Defendants created these cosmetics with unauthorized branding in to siphon off sales
from Plaintiff to Defendants.
PARTIES
1
Complaint: BORN TO SPARKLE
5. Sheree Cosmetics LLC, Plaintiff, is a Missouri Limited Liability Company.
6. Plaintiff's principal place of business is 7725 Twelve Oaks Dr., Spanish Fort, AL
36527.
7. Plaintiff is the owner of a trademark, BORN TO SPARKLE, United States Serial No.
88099083. (See EXHIBIT A.)
8. This BORN TO SPARKLE mark is protected by common-law use and the application
filed in the United States Patent and Trademark Office.
9. Upon information and belief, Defendants Kylie Cosmetics, LLC, Kylie Jenner, Inc.,
Seed Beauty, LLC are corporate entities that are valid, active, registered, and
subsisting in the State of California.
10. Upon information and belief, Defendant Kylie Jenner is an individual; Defendant
Kylie Jenner is an owner of Kylie Cosmetics, LLC, Kylie Jenner, Inc., King Kylie
Holdings, LLC, and Seed Beauty, LLC.
11. Upon information and belief, the principal place of business of Defendant Kylie
Cosmetics, LLC is at 1600 Westar Dr. Oxnard, CA 93033.
12. Upon information and belief, the principal place of business of Defendant Kylie
Jenner, Inc. is 21731 Ventura Boulevard, Suite 300, Woodland Hills, CA, 91364.
13. Upon information and belief, the principal place of business of Defendant King Kylie
Holdings, LLC. is 21731 Ventura Boulevard, Suite 300, Woodland Hills, CA, 91364.
14. Upon information and belief, the principal place of business of Defendant Seed
Beauty, LLC is 1451 Vanguard Drive, Oxnard, CA 93033 or 3011 Townsgate Road,
Suite 400, Westlake Village, CA 91361.
JURISDICTION AND VENUE
15. Plaintiff repeats and realleges Paragraphs 1 through 14 of this Complaint as if fully
set forth herein.
16. Plaintiff does business in New York.
17. Defendants do business in New York.
18. Defendants are and have been causing to be created, managing the creation of,
importing, exporting, distributing, supplying, advertising, promoting, offering for
sale, and selling the cosmetics bearing the mark BORN TO SPARKLE in New York.
2
19. See EXHIBIT B, which is an affidavit and example of a purchase made in the State
of New York and, more specifically, in this judicial district, from the Defendants’
“Born to Sparkle collection”.
20. Upon information and belief, Defendants have thousands of purchases like the one
made in EXHIBIT B showing the sale of BORN TO SPARKLE marks in New York.
21. See EXHIBIT C, which specifically shows that the Defendants have purposefully
availed themselves of the State of New York by having retail sales here.
22. Upon information and belief, the Defendants regularly sell their products in the State
of New York and, more specifically, this judicial district.
23. Jurisdiction in this Court is proper pursuant to Fed. R. Civ. Proc. 7, 28 U.S.C. §1331.
24. This Court has subject matter jurisdiction pursuant to 15 U.S.C. §1121.
25. This Court has subject matter jurisdiction pursuant to 15 U.S.C. §§1114(1) and (2).
28. This Court has personal jurisdiction over Defendants, which have purposefully
availed themselves of the laws of the State of New York by the marketing and sales
of goods bearing the BORN TO SPARKLE trademark within the State of New York,
including via the Internet.
29. The Court has diversity jurisdiction over the matter, because the Plaintiff and
Defendants come from different states pursuant to 28 U.S.C. §1332(a)(1).
30. Venue in this Court is proper pursuant to 15 U.S.C. §1071(b)(4).
31. Venue in this Court is proper pursuant to 28 U.S.C. §1391.
BACKGROUND AND FACTS
set forth herein.
33. Plaintiff is a company that sells cosmetics.
34. Plaintiff filed its BORN TO SPARKLE trademark on August 30, 2018 and was
assigned serial number 88099083.
35. BORN TO SPARKLE represents, “Cosmetics and make-up” in International Class 3.
3
36. Plaintiff first used BORN TO SPARKLE in commerce on November 1, 2017. See
EXHIBIT A.
37. BORN TO SPARKLE, is valid, subsisting and in full effect and serves as prima facie
evidence of the validity of the mark and of Plaintiff’s exclusive right to use the mark
on the goods listed in the registration. See EXHIBIT A.
38. Defendants sell and offer to sell products with the BORN TO SPARKLE trademark
at kyliecosmetics.com. See EXHIBIT D.
39. Plaintiff’s use of BORN TO SPARKLE trademark occurs prior to Defendants’ use of
the same mark.
40. Plaintiff’s trademark, BORN TO SPARKLE, possesses a high degree of

distinctiveness and represents an extremely valuable asset of Plaintiff’s business.
41. Plaintiff has another trademark, BORN TO BE ICONIC, which is in use in

commerce.
42. Plaintiff’s BORN TO BE ICONIC has been applied for in the United States Patent
and Trademark Office, under U.S. Serial No. 88162876.
43. Plainitff’s BORN TO SPARKLE and BORN TO BE ICONIC create a family of

BORN TO marks.
44. Defendants, collectively and individually, are creating, causing to be created,

managing the creation of, importing, exporting, distributing, supplying, advertising,
promoting, offering for sale, selling the infringing products without the authorization
of Plaintiff or license from Plaintiff.
45. Defendants are using the exact same trademark, BORN TO SPARKLE, confusing
consumers and likely confusing consumers to believe that consumers are buying the
genuine, original BORN TO SPARKLE cosmetics from Plaintiff. See EXHIBIT E.
46. Consumers are confused and likely to be confused between the BORN TO SPARKLE
products from the Plaintiff and the BORN TO SPARKLE products from the Plaintiff.
See EXHIBIT E.
47. Plaintiff packages its products with inherently distinctive packaging, including the
imprinting of quotations in the products.
48. Defendants have created their own products with the imprinting of quotations,
creating a likelihood of confusion in the minds of potential customers as to the
source, affiliation, or sponsorship.
4
49. Defendants have created their own BORN TO SPARKLE products with similar
colors and packaging.
50. Plaintiff prints inspirational quotations on the inside of its products and Defendants
also print inspirational quotations after the Plaintiff did.
51. Defendants, collectively and individually, are creating, causing to be created,

promoting, offering for sale, selling the infringing products without the authorization
of Plaintiff or license from Plaintiff.
52. Defendants, collectively and individually, are also creating, causing to be created,
promoting, offering for sale, selling products that infringe the entire family of BORN
TO marks without the authorization of Plaintiff or license from Plaintiff
COUNT I
(Trademark Infringement Under 15 U.S.C. § 1114(1))
set forth herein.
54. This claim is for the infringement of a trademark filed in the United States Patent &
Trademark Office, pursuant to Section 32(1) of the Lanham Act, 15 U.S.C. §1114(1),
as amended.
55. Defendants’ use of BORN TO SPARKLE is confusingly similar to, and a colorable
imitation of, Plaintiff’s federally applied-for BORN TO SPARKLE mark.
56. Defendant has and continues to use BORN TO SPARKLE unlawfully on websites to
sell products.
57. Defendant’s unauthorized and unlawful use of the BORN TO SPARKLE designation
is likely to cause confusion and mistake and to deceive the public as to the approval,
sponsorship, license, source or origin of Defendants’ goods.
58. Upon information and belief, Defendants’ infringement of Plaintiff’s federally

applied-for BORN TO SPARKLE mark has been willful, intentional and deliberate,
and designed to trade on the goodwill associated with the BORN TO SPARKLE
mark, which was established solely by Plaintiff in the course of its business.
59. Defendants have profited and been unjustly enriched, and will continue to profit and
be unjustly enriched, by sales and publicity that none of these Defendants would
otherwise have obtained but for their individual and collective unlawful conduct.
5
60. Defendants’ acts described in paragraphs 51-52 have caused and will continue to
cause injury and damage to Plaintiff, and have caused and will cause irreparable
injury to Plaintiff’s goodwill and reputation and, unless enjoined, will cause further
irreparable injury, whereby Plaintiff has no adequate remedy at law.
COUNT II
(False Designation of Origin Under 15 U.S.C. § 1125)
set forth herein.
62. This claim is for false designation of origin, false endorsement and unfair competition
in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), as amended.
63. Plaintiff’s BORN TO SPARKLE trademark has become highly distinctive of the
goods listed in the registration.
64. By its use or imminent use of BORN TO SPARKLE without the consent or
authorization of Plaintiff as described above, Defendants have falsely designated the
origin of Defendants’s goods, and Defendants have thereby competed unfairly with
Plaintiff and engaged in acts of false designation of origin and false sponsorship, in
violation of 15 U.S.C. § 1125(a), as amended.
COUNT III
(Federal Trade Dress Infringement Under 15 U.S.C. § 1125(a))
65. Plaintiff repeats and re-alleges paragraphs 1 through 64 of the Complaint as though
set forth fully herein.
66. The look and feel of the Plaintiff’s packaging, including quotations in the packaging,
is Trade Dress that is non-functional. See EXHIBIT G.
67. The Plaintiff’s Trade Dress is unique and distinctive as to the source of the Plaintiff’s
report make up and cosmetics and has acquired secondary meaning because
consumers associate the quotations in the packaging and Plaintiff as the source of
goods provided under the Plaintiff’s Trade Dress.
68. The Plaintiff’s Trade Dress is entitled to protection under both federal and common
law.
69. Defendants’ use in commerce of quotations in the packaging, containing the look and
feel of packaging from the Plaintiff, and Trade Dress to advertise, market, promote,
distribute, offer for sale, and/or sell Defendants’ products (including, but not limited
to, the infringing products), without Plaintiff’s consent, is likely to cause confusion,
cause mistake, and/or deceive consumers into mistakenly believing that Defendants
are the Plaintiff, or are licensees, authorized distributors, or affiliates of Plaintiff, or
6
that Defendants, their activities, and/or their products, are authorized, endorsed,
sponsored, or approved by Plaintiff, or vice versa.
70. Defendants have made, and will continue to make, substantial profits and gain from
their unauthorized use of the Plaintiff’s Trade Dress to which they are not entitled in
law or equity.
71. The acts of Defendants alleged in this complaint above were intentional, willful, with
bad faith, and were committed with the intention of deceiving and misleading the
public and causing harm to Plaintiff, and made with the full knowledge of Plaintiff’s
Trade Dress rights.
72. Defendants’ acts and conduct complained of herein constitute federal trade dress
infringement in violation of 15 U.S.C. § 1125(a).
73. Plaintiff has suffered, and will continue to suffer, irreparable harm from Defendants’
unauthorized use of the Plaintiff’s Trade Dress unless restrained by law.
COUNT IV
(Common Law Unfair Competition)
set forth herein.
75. Defendants’ acts of creating, causing to be created, managing the creation of,
importing, exporting, distributing, supplying, advertising, promoting, offering for
sale, selling the infringing products without the authorization of Plaintiff or license
from Plaintiff mean that the Defendants are deceptively trying to “pass off” their
products as those of the Plaintiff, or as somehow related to or associated with, or
sponsored or endorsed by the Plaintiff, thereby exploiting the Plaintiff’s reputation in
the marketplace.
76. Defendants' acts and conduct are likely to cause confusion, mistake and deception
among the general consuming public and the trade as to the source of Defendants'
infringing products, or as to a possible affiliation, connection or association between
Plaintiff and Defendants, and/or-between Plaintiff’s products and Defendants'
infringing products in violation of Plaintiff’s rights under the common law of the
State of New York.
77. Upon information and belief, by their actions, Defendants intend to continue their
unfairly competitive acts, unless restrained by this Court.
78. Upon information and belief, by their willful acts, Defendants have made and will
continue to make substantial profits and gains to which they are not in law or equity
entitled.
7
79. Defendants' acts have damaged and, unless enjoined, will continue to irreparably
damage Plaintiff, and Plaintiff has no adequate remedy at law.
COUNT V
(Common Law Trademark Infringement)
set forth herein.
81. This claim is for trademark infringement and in violation of the common law of the
State of New York.
82. The aforesaid conduct of Defendants constitutes willful trademark infringement under
the common law of the State of New York.
unlawful conduct, and to willfully infringe Plaintiff’s BORN TO SPARKLE
trademark, unless restrained by this Court.
unlawful conduct, and to willfully infringe Plaintiff’s BORN TO family of
trademarks, unless restrained by this Court.
85. Upon information and belief, by their willful acts, Defendants have made and will
continue to make substantial profits and gains to which they are not in law or equity
entitled.
86. Defendants' acts have damaged and, unless enjoined, will continue to irreparably
damage Plaintiff, and Plaintiff has no adequate remedy at law.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff prays that this Court enter judgment against Defendant as follows:
1. Permanently enjoin Defendants from using the mark BORN TO SPARKLE in any
capacity in connection with any goods;
2. Permanently enjoin Defendants from using the mark BORN TO BE ICONIC in any
capacity in connection with any goods;
3. Permanently enjoin Defendants from creating, causing to be created, managing the

creation of, importing, exporting, distributing, supplying, advertising, promoting,
8
offering for sale, and selling any product that infringe upon the Plaintiff’s trade dress
in any capacity;
4. Adjudge that Plaintiff recover from Defendants its damages in an amount to be

determined at trial;
5. Adjudge that Defendants be required to account for revenues and profits that are
attributable to its unlawful acts and that Plaintiff be awarded three times Defendant’s
profits under 15 U.S.C. §1114, plus prejudgment interest;
6. Adjudge that Defendants be required to account for revenues and profits that are
attributable to its unlawful acts and that Plaintiff be awarded three times Defendant’s
profits under 15 U.S.C. §1117, plus prejudgment interest;
7. For reasonable attorneys’ and expert witness fees; and
8. Grant any other and further relief as this Court may deem just and proper.
JURY DEMAND
Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Plaintiff requests a trial
by jury of all issues so triable.
Dated: October 20, 2018
Anthony M. Verna III, Esq.

Verna Law, P.C.
80 Theodore Fremd Ave.
Rye, NY 10580
Attorney for Plaintiff

Sheree Cosmetics, LLC
9
IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF

NEW YORK
Sheree Cosmetics LLC ) Court No.:

)
Plaintiff, )
vs. )
)
Kylie Jenner )
Kylie Cosmetics, LLC )
Kylie Jenner, Inc. )
Seed Beauty, LLC )
King Kylie Holdings, LLC )
)
Defendants
CERTIFICATE OF SERVICE
The undersigned hereby certifies that on this __ day of October 2018, a copy of the foregoing
Complaint was served via , on the following:
Respectfully submitted,
Dated this October , 2018
Anthony M. Verna III, Esq.

Verna Law, P.C.
80 Theodore Fremd Ave.
Rye, NY 10580
10
EXHIBIT A
Trademark Application of BORN TO SPARKLE, U.S. Serial No. 88099083
11
EXHIBIT B
Purchase of Defendants’ product in New York.
12
EXHIBIT A
E-mail that Cynthia Webster received from Kylie Cosmetics by Kylie Jenner confirming order
number 8494641.
EXHIBIT B
.
EXHIBIT C
Screenshots of the Defendants’ website, showing the sale of products in the State of New York
and in this Judicial District
13
14
EXHIBIT D
Defendants offering BORN TO SPARKLE products:
Defendants offering the “born to sparkle” collection:
15
EXHIBIT E
Posts on Instagram from Kylie Cosmetics (one of the Defendants) showing use of the BORN TO
SPARKLE mark and a consumer knowing that it was first used by Sheree Cosmetics (Plaintiff).
16
17
EXHIBIT F
Inside of the BORN TO SPARKLE product from Sheree Cosmetics (Plaintiff):
18
Similar inspirational quotation on the inside packaging of the Defendants’ products:
19

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Case 1:18-cv-09673 Document 1 Filed 10/22/18 Page 1 of 23

IN THE UNITED STATES DISTRICT COURT

Sheree Cosmetics LLC ) Court No.:

NATURE OF THE ACTION

2. In particular, this case concerns Defendants’ willful infringement of the Plaintiff’s

5. Sheree Cosmetics LLC, Plaintiff, is a Missouri Limited Liability Company.

JURISDICTION AND VENUE

16. Plaintiff does business in New York.

17. Defendants do business in New York.

30. Venue in this Court is proper pursuant to 15 U.S.C. §1071(b)(4).

31. Venue in this Court is proper pursuant to 28 U.S.C. §1391.

BACKGROUND AND FACTS

33. Plaintiff is a company that sells cosmetics.

35. BORN TO SPARKLE represents, “Cosmetics and make-up” in International Class 3.

40. Plaintiff’s trademark, BORN TO SPARKLE, possesses a high degree of

41. Plaintiff has another trademark, BORN TO BE ICONIC, which is in use in

43. Plainitff’s BORN TO SPARKLE and BORN TO BE ICONIC create a family of

44. Defendants, collectively and individually, are creating, causing to be created,

51. Defendants, collectively and individually, are creating, causing to be created,

58. Upon information and belief, Defendants’ infringement of Plaintiff’s federally

PRAYER FOR RELIEF

3. Permanently enjoin Defendants from creating, causing to be created, managing the

4. Adjudge that Plaintiff recover from Defendants its damages in an amount to be

7. For reasonable attorneys’ and expert witness fees; and

by jury of all issues so triable.

Dated: October 20, 2018

Anthony M. Verna III, Esq.

Attorney for Plaintiff

IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF

Sheree Cosmetics LLC ) Court No.:

Anthony M. Verna III, Esq.

Defendants offering the “born to sparkle” collection:

Similar inspirational quotation on the inside packaging of the Defendants’ products:

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