Makeup artist Analese Redman models Kylie Cosmetics Born to Sparkle eyeshadow on Instagram.

When shoppers open up Sheree Cosmetics’ Born to Sparkle glitter eye shadow palettes they’re greeted with affirmations like “You mustn’t be afraid to sparkle a little bit brighter, darling” on the inside cover. The packaging is a signature look of the indie cosmetic company. So is the name “Born to Sparkle.”

That’s why when fans started sending Tiffany Herrmann, founder of  Sheree Cosmetics, screenshots of Kylie Cosmetics’ products, the firm started by reality star Kylie Jenner, Herrmann was shocked. Jenner’s glitter-based eye shadow was also called Born to Sparkle, and came in packages with inspirational quotes on the inside.

“It was just a little bit odd,” Herrmann told WWD.

Herrmann, who is based in Alabama, filed a lawsuit in New York federal court on Oct. 22, suing Kylie Cosmetics for allegedly copying Sheree Cosmetics’ Born to Sparkle name and packaging.

“I didn’t think that it would ever have to come to this,” said Herrmann, a celebrity makeup artist who launched the company with her savings, after “playing with cosmetics in my kitchen,” in August 2017. The Born to Sparkle Glitter Palette, a glitter-based, glue-infused eye shadow palette, came out two months later.

“It is our number-one selling item,” she said. Enthusiasts include Shar Jackson, Rachel McCord, Brooke Lewis and Christy Buss, whose family owns the Los Angeles Lakers.

Problems started to arise for Herrmann in August, when a photo of makeup artist Analese Redman wearing Kylie Cosmetics’ Born to Sparkle glittery eye shadow in gold was posted on the company’s official Instagram page. 

“Isn’t this the same name as @ShereeCosmetics ‘Born to Sparkle’ palette?,” Instagram user @brittney_trauma_queen wrote on the post on Aug. 27. A day earlier, on a similar post advertising Kylie Cosmetics Born to Sparkle glittery eye shadow, the same user wrote, “Stealing other brands names is not cool.”

Herrmann filed for trademark protection on Aug. 30, 2018 — 24 days after Kylie Cosmetics Born to Sparkle hit the market.

“It was my mistake,” Herrmann said. “I kind of put off the trademark for a little bit because I was working on something else,” she said, including attending the Emmys on Sept. 17. “So I wasn’t really checking my messages.”

But Alexandra Roberts, a trademark lawyer and associate professor of law at the University of New Hampshire, said the timing is actually not a problem because companies are protected by a type of common law trademark protection automatically. 

Trademarking the general use of inspirational quotes inside of a product, however, is not protected, said Roberts, who is not associated with the case. Neither is trademarking all glittery eye shadow.

“Trademark rights are based on how consumers understand something,” she said. “If it’s one specific phrase and the company is using it really aggressively in all of its advertising and its packaging,” then it might be eligible for trademark protection, Roberts said. One common example would be Nike’s swoosh symbol. 

In the case of Sheree versus Kylie, both eye shadows are called “Born to Sparkle,” but the phrases inside are different. Jenner’s line has messages such as, “What if I fall? … Oh my darling, what if you fly.” Or, “I have one word for tonight… vodka,” printed on the inside flap.

Images of Sheree Cosmetics’ Born to Sparkle glitter palette.  Courtesy

Screenshots of Kylie Cosmetics’ Born to Sparkle glitter palette with similar inspirational quotes on the packaging.  Courtesy

In the suit, Sheree Cosmetics states Kylie Cosmetics is “confusing customers” with the identical name and similar packaging, and “deceptively trying to “pass off” their products as those of Sheree Cosmetics. 

But Roberts pointed out that the name “Born to Sparkle” appears to be the name of one shade in Jenner’s line, whereas it’s the name of Sheree Cosmetics’ entire eye shadow collection.

“Trademark law is not going to be anti-competitive; it’s going to be pro-competitive,” she said. “We want consumers to have access to lots of choices.”

Kylie Cosmetics, a private company, founded by Kylie Jenner three years ago, would not respond to a request for comment. The cosmetics company, originally launched under the name Kylie Lip Kits, has 17.8 million followers on Instagram and was estimated to be worth around $800 million, according to Forbes last summer. 

This isn’t the first time Jenner and her entourage have had legal issues. In 2015, small business Island Company tried to sue Jenner and sister Kendall for trademark infringement over a collaboration with retailer PacSun. The following year, Kylie Cosmetics was accused of misappropriating imagery from makeup artist Vlada Haggerty. 

Kylie Cosmetics’ Born to Sparkle line is sold out online. Meanwhile, sales of Sheree Cosmetics’ Born to Sparkle line declined in August, around the time Jenner released her version, according to Herrmann.   

Sheree Cosmetics is asking for Jenner to stop using the name “Born to Sparkle,” and an amount three times the profits Kylie Cosmetics made off its Born to Sparkle products. Roberts said the chance of this being a successful case is “a long shot.”

Despite the case, Herrmann said she still respects Jenner and would even do her makeup if given the opportunity. 

“I think Kylie is an impressive entrepreneur,” Herrmann said. “It’s just business.”

 

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