A Sticky Situation for Tarte Cosmetics.
In the fast-paced world of cosmetics, branding is everything. A catchy tagline can elevate a product from mere makeup to a lifestyle choice. So when Tarte Cosmetics chose to name its new stick foundation "Big Stick Energy," a tagline prominently used by Basma Beauty when marketing its stick foundation, The Foundation Stick, the implications raised eyebrows across the beauty industry. Let’s dive deeper into the potential legal ramifications of this situation and what it means for both companies.
Understanding Trademark Basics
Before we delve into the details, it's crucial to understand what trademarks are and how they function. A trademark serves as a sign of the source of goods and services. It can include words, slogans, logos, and even sounds. To be eligible for trademark protection, a phrase or slogan typically must meet certain criteria:
Distinctiveness: It must be capable of distinguishing the goods or services of one company from those of another. For example, you won’t be able to trademark your yogurt shop named Yogurt Shop.
No Conflicts: It should not conflict with an existing trademark, i.e., it should not be confusingly similar in appearance, sound, or meaning and used with related goods or services to an existing trademark.
Use in Commerce or Intent to Use: Just as it sounds—you must use (or intend to use) your trademark in selling your goods or services in interstate commerce. For more detailed information on the differences between use in commerce and intent to use, visit the USPTO website regarding trademark application filing basis.
Trademark infringement occurs when one party uses a mark that is confusingly similar to another's registered mark in a way that could cause consumer confusion regarding the source of the goods or services.
Tarte vs. Basma Beauty
Basma Beauty, founded by burn survivor Basma Hameed in 2021, has established a clear identity in the beauty sector with its goal of providing makeup products for everyday people and their “real” skin, flaws and imperfections included.
On the other hand, Tarte, a well-known player in the cosmetics industry, has a reputation for quick iteration and product development. When they released a stick foundation with the name “Big Stick Energy,” it raised concerns about brand dilution and consumer confusion—key components in trademark law.
However, the situation is made more complex by the fact that Basma Beauty’s product is not directly named “Big Stick Energy” but “The Foundation Stick,” instead using the contested phrase as its product tagline in marketing. Taglines themselves often do not meet trademark requirements as they are usually not distinct enough to properly identify and distinguish the good or service. Difficult but not impossible—Basma Beauty could have tried to trademark the tagline alone or together with its product name for better IP and brand protection.
Lessons for Brands
This situation serves as a reminder for all brands, both big and small, to be vigilant in protecting their intellectual property. Here are a few key takeaways:
Conduct Thorough Searches: Before adopting a tagline or brand element, companies should conduct comprehensive searches to ensure they aren’t copying an existing product name or tagline. For example, Tarte alleges that it conducted a USPTO search of “Big Stick Energy” and found no existing registered marks. However, Tarte should not have stopped at only a trademark search, as a little more research would have quickly brought up Basma Beauty’s The Foundation Stick and its “Big Stick Energy” marketing tagline.
Document Use: Companies should keep diligent records of how and when a tagline is used, showcasing its position as a brand identifier.
Be Prepared to Defend: If a brand establishes a distinctive tagline, it should be ready to defend its use against potential infringers.
Conclusion
The intellectual property implications of Tarte choosing the product name "Big Stick Energy" are complex and multifaceted. While both companies are well-respected in the cosmetics community, Tarte is a significantly larger brand with access to more resources than an indie brand like Basma Beauty. This likely spurred the community backlash that occurred and left people with the uncomfortable sentiment that a big brand is bullying and stealing from a smaller brand, hoping the smaller brand cannot defend its IP via an expensive legal battle.
Ultimately, innovation, creativity, and respect for intellectual property will continue to define the beauty world we engage with today. As consumers and industry stakeholders, remaining informed about such legal nuances can help foster a more equitable market for everyone involved.
