Mary Kay sends Cease-and-Desist Letter to Ulta Beauty

Texas-based multi-level marketing company, Mary Kay Inc, was established on September 13, 1963, by Mary Kay Ash. It is a privately owned American company, well-reputed for its top-quality cosmetics and beauty products including skincare creams, vitamins, serum, foundation, mascara, face masks, perfumes, etc. Mary Kay was recognized as the sixth largest network marketing company that succeeded in earning total revenue of $3.25 billion dollars in 2018.

Apart from its trademarked brand name “Mary Kay”, the company has also obtained trademark registrations in a number of countries for its distinguished cosmetic collections and chains. One such renowned trademarked cosmetic collection launched by Mary Kay in the year 2011 is “Lash Love”, specially designed for top-class mascaras and lashes.

This mascara collection gave birth to a legal tussle between the cosmetic giants, Mary Kay and Ulta Beauty, wherein Mary Kay accused the globally-recognized beauty chain, Ulta Beauty for hijacking its existing trademarked mascara line, Lash Love. Mary Kay claimed that it has sold a huge number of mascara products under the Trade name Lash Love since the year 2011 and earned approximately $120 million dollars out of sales from the same. It is further contended that the words LASH LOVE is displayed in bold and capital letters on the “Ulta Beauty’s Kit of Six Mascara Product box” and such display is deceptively similar to that of Mary Kay’s Lash Love collection, potentially confusing the consumers due to deceptively similar representation and packaging.

On November 7, 2019, Mary Kay sent a cease-and-desist letter to the well-known cosmetic giant, Ulta Beauty, demanding Ulta Beauty to stop selling the impugned Mascara Kit and similar products under the name of Lash Love as well as to remove and edit the name of listing of the alleged infringing products from its official website. As a response to this cease-and-desist letter, Ulta’s counsel stated that the said letter is being kept under review. Furthermore, Mary Kay contended that even after service of the said letter, Ulta Beauty is continuously selling the alleged infringing product on its official website as well as in more than 1100 retail stores across the USA.

Mary Kay’s counsel stated that “ongoing illegal conduct has caused, and will continue to cause, irreparable harm to Mary Kay’s reputation, goodwill, business relationships, intellectual property, and brand integrity.” 

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