It’s not every day that a small company stands up for itself against a multi-billion dollar company in court, and manages to obtain a large verdict in the process, but this is precisely the Cinderella story that played out in a trademark and trade dress infringement case in California recently. When Mixed Chicks, LLC (“Mixed Chicks”) sued Sally Beauty Supply LLC (“Sally Beauty Supply”), the jury awarded Mixed Chicks $8.5 million.
Actress Halle Berry endorsed Mixed Chicks’ products.
Mixed Chicks was founded by two women who were unhappy with the products available on the market for multicultural women with curly hair. They decided to develop and sell their own hair care products for women of mixed races, which today are sold to salons and beauty-supply stores. Mixed Chicks rose in popularity when Halle Berry endorsed the company. As a result, Sally Beauty Supply wanted to stock their products at retail shops. However, the two companies were not able to come to an agreement.
Years later, customers asked the owners of Mixed Chicks about a new product called “Mixed Silk” that was being sold for a much lower price. When the owners of Mixed Chicks looked into the matter, they found that Sally Beauty Supply was selling a product with Mixed Chicks’ trademark and also used Mixed Chicks’ web page search engine to direct consumers to Sally Beauty Supply’s infringing products. The product had a similar bottle and packaging, including the color and print. These facts likely led the jury to also award punitive damages to Mixed Chicks. The case ultimately settled for more than the amount that the jury awarded to avoid a further award of attorneys’ fees and disgorging profits of Sally Beauty Supply.
Although many trademark cases settle with an abandonment of the infringing trademark or entering into a coexistence agreement, there are cases where it pays to go the extra mile and invest in taking the case all the way to trial. I am sure Mixed Chicks is glad it did so.