On April 23, 2019, the U.S. Court of Appeals for the Eleventh Circuit affirmed the District Court’s finding that Anastasia, Beverly Hills, Inc., a cosmetics company, established a fair use defense in an infringement action brought by competitor Hard Candy, LLC. Hard Candy originally sued, alleging that Anastasia’s “Gleam Glow Kit” makeup product infringed the Hard Candy trademark. Anastasia’s Gleam Glow Kit is a flip-open makeup palette containing four different shades of facial highlighter, one of which was named “Hard Candy.” The Court of Appeals affirmed the District Court’s finding that (1) there was no likelihood of confusion between Anastasia’s highlighter makeup shade called “hard candy” and the branded makeup of the Hard Candy company; and (2) Anastasia established a descriptive fair use defense against the trademark infringement alleged by Hard Candy.

To prevail on its trademark infringement claim, a plaintiff must establish that a defendant’s use of a mark creates a likelihood of confusion with its trademark. The District Court applied a seven-factor test to determine whether Anastasia’s Gleam Glow Kit created a likelihood of consumer confusion. The Court of Appeals agreed that the “similarity of mark” factor weighed in favor of Anastasia, because while Anastasia uses the same words, all in capital letters (HARD CANDY), the Court must consider the “overall impression created by the use of the mark as a whole, rather than comparing the individual features.”


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