Credit: Jay Reed |Flickr
Vera Mona, LLC filed a complaint against Target Corporation on November 15, 2023, in the United States District Court, Central District of California, case number 5:23-cv-2340, alleging trademark infringement, unfair competition, and trade dress infringement over Target’s use of the mark COLOR SWITCH and distinctive packaging to sell a makeup brush cleaner. This case is currently being adjudicated, and this article relies on the facts alleged in the complaint.
In 2013, Letty Calvo, Vera Mona CEO and founder, invented the first-of-its-kind dry makeup brush cleaner while obtaining her MBA, selling it under the mark COLOR SWITCH. Following its quick success, Vera Mona was granted federal trademark registration for the COLOR SWITCH mark for a “cleaning tool for cosmetic brushes consisting of a cleaning sponge.” The trademark registration became incontestable in 2020.
Vera Mona also claims ownership of trade dress rights in the product’s distinctive packaging, alleging in the suit that because over three million units of the COLOR SWITCH branded products have been sold in this packaging in large national retailers over the course of more than nine years, its trade dress has acquired secondary meaning.
In addition, Vera Mona’s COLOR SWITCH brand has been featured in multiple magazines and has tens of thousands of followers across social media, further signifying its recognition by retail consumers and industry professionals as a source of quality products. Moreover, 770 social media influencers and makeup professionals have promoted the COLOR SWITCH brand on their channels, including Jeffree Star, a popular makeup artist with tens of millions of followers.
In 2018, Vera Mona used Rangeme, a platform that connects companies with potential retailers, to showcase the COLOR SWITCH branded product. Defendant, Target, shortlisted Vera Mona’s cosmetic brush cleaning tool product on Rangeme but ultimately declined to carry it.
Shortlisting of products allows retailers to review a supplier's entire catalog. Vera Mona used the registered trademark symbol ® in its entire COLOR SWITCH branded product line on Rangeme, including when Target shortlisted the product.
In 2019, Letty Calvo discovered Target was selling what appeared to be a copy of the COLOR SWITCH branded cosmetic brush cleaner made by Sonia Kashuk. Calvo emailed Target, informing them of her company's invention and its popularity and expressed her desire to work with Target in selling her product. Despite this, senior counsel for brands, Michael Kroll, indicated that Target had no interest in stocking Vera Mona’s product.
In 2022, Vera Mona again attempted to convince Target to carry the COLOR SWITCH branded cosmetic brush cleaner by providing Target with detailed catalogs of the COLOR SWITCH branded product line and their trade dress. The registered trademark symbol ® was used at all times during this communication.
In 2023, Calvo discovered Target was selling a nearly identical brush cleaner to Vera Mona’s product in nearly identical packaging and was doing so under Vera Mona’s registered COLOR SWITCH trademark. Calvo immediately contacted Target and demanded Target stop selling its infringing product and to respect Vera Mona’s intellectual property rights. Senior Counsel Kroll responded and stated he would investigate Vera Mona’s allegations.
It should be noted that Target has been sued on a myriad of occasions for intentional trademark infringement. Most of these cases were settled out of court.
Vera Mona seeks actual damages, defendant’s profits, and/or statutory damages, punitive damages, and an award of attorneys’ fees and costs.
U.S. District Judge Jesus G. Bernal granted Vera Mona’s Motion for Leave to File an Amended Complaint and denied Target’s Motion to Dismiss on February 9, 2024. Vera Mona filed its amended complaint on February 12, 2024.
The COLOR SWITCH trademark has U.S. Trademark Registration No. 4,703,823.
The case is Vera Mona, LLC v. Target Corp., case number 5:23-cv-2340, in the U.S. District Court for the Central District of California.
Vera Mona, LLC is represented by Holley A. Hoffman and Johnny Manriquez of AH General Counsel Services in San Diego, California. As a matter of disclosure, Charles Kim, one of the authors of this article, serves as Of Counsel for AH General Counsel Services, but is not involved in this case.
*The views expressed in this article do not represent the views of Santa Clara University.