Caviar Nails: The Point

Friday, I gave you the background of the Ciate dispute.  Today Im giving a legal analysis (I am not a lawyer) and wrapping it up into a final point of the whole issue. 

The Lanham Act protects unregistered trademarks to the same extent as registered marks because trademark rights emanate from the use and not merely the registration of the mark[1]. It is generally accepted that section 43(a) of the act protects qualified unregistered marks and the general principles qualifying a mark for registration under section 2 of the act are for the most part applicable in determining whether an unregistered mark is entitled to protection under section 43(a) [2]. In the District of New Jersey, and generally in most Federal districts across the country, the test to prevail for protection of an unregistered mark is:

  1. Mark is valid and legally protectable
  2. The plaintiff (pl.) owns the mark
  3. Defendant’s (def.) use of similar mark is likely to cause confusion concerning origin of pl.’s goods or service.[3]

A.   Validity and Protectability

It is generally accepted that an unregistered trademark is not valid (obviously), but the test of its protectability is under section 2 of the Lanham Act, since that section spells out how and what marks can be registered.

B.   Ownership

Ownership turns on priority of use, and market penetration.  Ciaté was not the first to use the term ‘caviar’ manicure, nor were they the ones who invented it. See infra.   Market penetration may weigh in the company’s favor, only because these polish bloggers are attempting to capitalize off this technique. Further the creator is a celebrity nail technician and was doing her job when she created the technique.  She probably isn’t looking for the mass compensation what Ciate is looking for. Perhaps compensation when she actually performs the service on her clients.

C.  Likelihood of Confusion

Finally, the last prong of the test deals with likelihood of confusion, where all districts of this country have different tests and lists of what they consider what is likely to cause consumer confusion.  There is not likely to be a confusion by consumers because as stated supra, neither the original creator nor the polish bloggers are attempting to make money from this technique.

The point

Ciaté.  A UK company, has applied for a trademark in the US for both:

  • ‘Ciaté Caviar Manicure’ and
  • ‘Caviar Manicure

While it is not currently registered, unregistered trademarks are afforded the same protection as registered ones because the law comes from the use of the trademark and NOT the registration of the trademark.

In theory Ciaté could sue the polish bloggers, although I don’t think it would be worth their while, and I don’t think they would be successful.  These bloggers aren’t seeking to gain money from the term ‘caviar manicure’.  Ciate did choose to send ‘cease and desist’ emails asking bloggers to stop calling their do-it-yourself manicures using miniature spherical colored balls a ‘caviar manicure’.  Why? Because Ciaté was in the process of applying for the trademark. And when the USPTO examining attorney looks up the words to be registered, if the trademark is too generic (i.e. being used by WHOLE ENTIRE polish community) guess who wont get their trademark registered??

As previously mentioned, the polish community is huge[4]. And I think Ciaté pissed them off.  They decided to call the manis ‘fish egg manicures’ and each one posted a set of pictures of them on April 13 2012.  They further went on to tell their followers how to do the caviar fish egg manicure for MUCH cheaper than the kits that Ciaté sells.

Fish Egg Friday Polish a holic

Fish Egg Manicure by The Polish Aholic

The tightly knit community further went on to credit Dashing Diva’s Pattie Yankee as the creator of the Caviar Manicure.  She created the look in the 2011 Mercedes Benz Fashion week for the Cushnie et Ocs show.  This issue has created such a stir in the community that there is another article that gets to the bottom of these nail art wars.

In their defense, Ciaté has said the letters are, in fact, NOT cease and desist notices.  They contacted the bloggers in an effort to get them to avoid using the term (and I speculated as to why previously).  Apparently Ciaté has offered an apology to the seven bloggers.

I think it’s important to note that Ciaté has released a velvet manicure set.  I don’t know if this term has been trademarked as yet.  But the blogger community, as well as other professional nail technicians already do a manicure similar to this using flocking powder. Like the miniature colorful balls, flocking powder can be obtained in a various colors for cheaper than a velvet manicure set from Ciaté.  I hope Ciaté has learned their lesson. It would be interesting to see how this plays out in the future though.

Velvet Mani by Nailasaurus

Velvet Manicure by the Nailasaurus

The point is. Don’t mess with the polish community.

[1] MNI Mgmt., Inc. v. Wine King, LLC, 542 F. Supp. 2d 389 (D.N.J. 2008)

[2] Two Pesos v. Taco

Cabana, 505 U.S. 763 (1992)

[3] Freedom Card, Inc. v. JP Morgan Chase & Co., 432 F.3d 463 (3d Cir. 2005)

[4] My own assessment.

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