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Beauty is one of the world’s most dynamic industries, where innovation, consumer expectations, and competition are constantly reshaping the market. On Venable’s The Beauty Law Glow-Up, partners Claudia Lewis and Kristen Ruisi explore the trends, challenges, and opportunities framing the future of beauty and wellness. Join them for conversations with legal, business, and industry leaders about what it takes to build, protect, and grow a brand in a rapidly changing landscape.
You're building a beauty or wellness brand in a fast moving, highly competitive market.
Kristen Ruisi:Standing out isn't just about developing quality products and creative campaigns. It's about navigating regulations, protecting your brand, and managing risk.
Claudia Lewis:From FDA oversight and product claims to data privacy and consumer expectations, the legal and regulatory landscape is becoming more complex.
Kristen Ruisi:Social media, influencer marketing and global expansion are only accelerating that complexity.
Claudia Lewis:I'm Claudia Lewis.
Kristen Ruisi:And I'm Kristen Ruisi. We're partners in Venable's Beauty and Wellness team.
Claudia Lewis:On this podcast, we talk with our Venable colleagues and industry insiders about the legal and regulatory issues shaping the beauty and personal care market.
Kristen Ruisi:And focus on practical guidance brands can use to stay compliant and competitive.
Claudia Lewis:Welcome to the Beauty Law Glow-Up.
Kristen Ruisi:This week, we're talking about trademark and trade dress enforcement and litigation. Hi. I'm Kristen Ruisi, a partner at Venable, focusing on trademark prosecution, enforcement, and brand protection. As beauty brands compete in a crowded and fast moving market, trademark strategies become central to how they launch, scale, and protect their products.
Kristen Ruisi:From choosing protectable brand names to planning international filings, policing copycats, and leveraging trade dress, beauty companies face a unique mix of marketing pressure and legal risk. In an industry where products can go viral overnight and expansion can happen quickly across borders, early trademark planning can make the difference between growth and costly conflict.
Kristen Ruisi:In this episode, we explore how beauty brands can build smarter trademark strategies, protect their product packaging and names, and navigate an increasingly complex global marketplace. To help us do that, we're talking to Becky Liebowitz, a Venable partner and cochair of the firm's Trademark Prosecution and Brand Management Group. Becky, thanks so much for being here.
Becky Liebowitz:Thanks for having me. I'm excited.
Kristen Ruisi:So to start us off at a high level, what is it about the beauty industry that makes it so interesting from a trademark perspective? Have you seen that change over time? And are clients thinking about trademarks differently now than they did a few years ago?
Becky Liebowitz:The beauty industry is from my perspective one of my favorite clients to work with because they historically plan ahead. So a lot of times in beauty industry, they have a product that is in R&D for one year, two R
Becky Liebowitz:It wasn't even like a legal term of art. So they are often planning long ahead, farther out from when they're ready to hit the market. And so oftentimes, not all the time, but oftentimes, they're also thinking about marketing and what the brand name is gonna be, what the product packaging is gonna be, all those other things that we can then consult on earlier on, redirect as necessary, and or file trademark applications to sort of secure their place in line. Because for a lot of other clients, they don't think about the branding stuff right out of the gate. Instead, they're focusing development on what channels of trade they're gonna be in and what markets.
Becky Liebowitz:And then all of a sudden, they call and they're, you know, it's, hey, Becky. We're launching this product in two weeks. Are we okay to use this name? Well, the answer is gonna be how hard is it to change the product packaging that you've already marked up because, you know, two weeks isn't enough leeway to clear a name. So the beauty industry has sort of always been really good in that they're ahead of the game thinking about these things far enough in advance to make sure that their IP protection is in place as well.
Kristen Ruisi:Great. And so when a beauty client comes to you with a new brand name, what's your initial reaction? What are you looking for to determine whether it's really actually protectable?
Becky Liebowitz:So this answer is actually... It's it's on some level the same for all clients, but there are certain words and terms that come up in the beauty industry more than others. So there's usually two different things that clients are thinking about, when they're thinking about branding. It's going to be can they use this name and can they stop others from using this name.
Becky Liebowitz:With those things in mind, when they come to me with a name, I'm thinking about it in terms of the trademarks or spectrum or continuum that we think about where on one end, we've got completely the strongest trademarks, the things that I love as a trademark attorney and marketing and branding people hate because it makes their job the hardest, and those are the completely made up words.
Becky Liebowitz:Those are the ones that it's going to take the longest for the branding and the marketing people to get consumers to remember, and so it's gonna make their jobs harder. It's gonna make the trademark attorney's job much easier because those things are going to get to the trademark office more easily because they're gonna be more unique. Next on this sort of spectrum, we have the arbitrary marks, which are marks that are a word or a term that is commonplace generic, the common word for something in one instance, but totally random and arbitrary for another. Also good from my perspective, slightly better from the branding and the and the marketing people's perspective, but, not where they want to be.
Becky Liebowitz:Then we've got suggestive terms, terms that sort of suggest to a consumer but don't explicitly say it. Still okay. Not great. Then we've got the marketing and the marketers dream term, which is what you see a lot in the beauty industry, which are descriptive words. Words that immediately describe a feature characteristic or function of the product or what the product will do for you.
Becky Liebowitz:These words are harder to protect. Right? Because the idea is that other people need to be out there using them as well. They are better for the marketing department, because they are... It's doing their job for them.
Becky Liebowitz:It's telling you the consumer what this product is going to do. It can be harder to protect for that reason. It's also harder to enforce those marks because you've got so many other people in the space using the same or similar mark that you might not be able to stop somebody from using a same or similar mark if it's only one word difference or or a different spelling. Sometimes you can't. So it's it's all about from a business perspective, are you looking to make sure you can do what you need to do or you also want to be able to stop other people from doing things.
Kristen Ruisi:So when you're talking about descriptive terms, or do you mean things like clean and skin or collection or maybe even blurring? Because it's a blurring product. So when you have clients that really want to use those terms, how do you deal with that? Do you try to get them to change that, or do we just provide risk levels?
Becky Liebowitz:It depends somewhat on the client but I view my job as giving the client all of the information. For some, I might tell them what I would do in a certain situation but seeing as I probably gamble more than I should in a casino, I'm not sure that I'm the best judge of character or risk level taker on that sort of thing. But, you know, we can tell a client there's a dead on hit. This mark is not available, even if it's descriptive.
Becky Liebowitz:And the client's response could be like, okay. Cool. But I'm only going to be giving away 500,000 products in California and no other state, so I'm willing to take that risk. I'm not going nationwide to all of the shelves versus a client who's saying, this is the new name of our entire product line. There's going to be sub brands.
Becky Liebowitz:It's going to be nationwide. It might go international. Then they may not want to take as much risk. So, I think it's sort of an information in risk level out sort of situation where if I have all the information, I can help guide a client and tell them what they should and shouldn't do, what I might do, but it's ultimately the business decision because at the end of the day, are just as much about business as they are about law. So, it's the client's decision at the end of the day.
Kristen Ruisi:I want to touch on also just talking about the different types of terminology. May it be a descriptive mark, a suggestive mark, and we'll get into international down the road. But particularly when a client has a global brand, is there terminologies that maybe that translates into something derogatory? How do you deal with that?
Becky Liebowitz:It's not just like the translation issue. So there's also just in the US and other countries, there's claims issues or FDA... Like, are certain words that can and can't be used in certain situations.
Becky Liebowitz:So you need to run it by, you know, FDA counsel or other. You make sure all of those things are sort of okay and and to proceed but also especially as you're mentioning in the international world, trademarks are country specific. So just because a mark is available in The US doesn't mean it's also available in the EU or Australia or China. Further, just because it means one thing in The US does not mean that it also means that in China or Brazil. It doesn't mean that it translates to that. So if you are planning on scaling internationally and you want to use the same mark worldwide, first of all, prepare yourself that that might not be possible because it is very, very difficult to secure rights worldwide in in the same term. But you need to think about how that term translates, how it transliterates. If you're going to be using the English language version or the local language, right, if you've got Cyrillic or, you know, whatever Mandarin, whatever the local language dialect is in a particular geographic region that you're going to, does it mean what you think it means? Because, I mean, there's a sort of famous example with a car in Mexico that it didn't translate well into Spanish, and it was a oh crap sort of moment that they then had to change it.
Becky Liebowitz:And there are some brands that do have to use different marks within a specific geographic region either because somebody else got the rights in that region to their mark first, or because it didn't translate well and it was offensive.
Kristen Ruisi:I had a situation when I started my career off working in house in a luxury company. They were launching a perfume, and it was global. And it wound up being a derogatory slang term in Latin America. All of Latin America too. Marketing really, really wanted it, and it was like, well, you're going to offend half your consumers. So we had proceed with that one.
Becky Liebowitz:Did they proceed with it in other countries and just
Kristen Ruisi:not like they just because they wanted it to be, like, a global... You know, and that's, I think, the problem. In some instances, some clients might say, okay. This side of the world, we're using it, and we'll choose something different in this country where it's derogatory. But a lot of clients want it to be consistent throughout.
Kristen Ruisi:Going back to terms like clean and skin, which beauty brands love to use, can you walk us through an example where a client was set on a name that posed risks and how you navigated that conversation?
Becky Liebowitz:That's an excellent question, and I'm not going to answer it. However, I will give you another good story with a client that you might like even better.
Kristen Ruisi:Okay.
Becky Liebowitz:Thank you. So it was, I'll give you two, actually. So there was one that they asked me if something was available. I did the search. It was completely clear.
Becky Liebowitz:I've almost never seen a mark that clear from a trademark perspective. And so my comment back to them was this mark is totally available from a trademark perspective. As a woman, I strongly recommend that you never utter these words again or use it as a trademark. And my client at that point was being run by a bunch of men and they all sort of looked at each other and said, oh, crap. You're totally right.
Becky Liebowitz:And lo and behold, did not. So that's kinda getting back to that, you know, the international whether or not it has a local transliteration, but it's also not just international. It's whether or not you're thinking about all of your potential consumers or people seeing something in the marketplace and how it is then going to be interpreted. And I think that's especially true these days with social media and deepfakes, but things being taken out of context, how something is going to play, and how it could be tweaked. I know a lot people sort of think about that when they're naming a child, like, what's the worst nickname that that this kid can be teased with in the future?
Becky Liebowitz:Think about it from your product name also. The other thing sort of off point, but a great client story, again, maybe the same client is them coming to me to ask if something was available for a skincare line and telling me that they had run it through AI, and it came back clear. Lo and behold, I ran it through our searching database and within about five seconds found an... A dead on hit saying that it wasn't clear. That was still in use.
Becky Liebowitz:It wasn't even like this is a trademark that it was registered, but it hadn't been used in five or six years. I mean, it was in use, and I showed it to them and told them that I was so pleased to prove AI wrong that I wasn't even gonna charge them for the search.
Kristen Ruisi:So I'm hearing that you don't like using AI for clearance searches.
Becky Liebowitz:I don't. I'm probably going to get in trouble somewhere down the road in AI. If you're listening, I am sorry to my AI overlords, but I think that there is a place for human experience in this sort of thing.
Narrator:Artificial intelligence is transforming every industry. But with opportunity comes new legal, business, and strategic challenges. On AI and IP: The Legal Frontier, Venable partner Justin Pierce talks with industry leaders and legal professionals about AI governance, innovation, intellectual property, compliance and risk management. Get practical insights to help your organization harness AI with confidence. Search for AI and IP: The Legal Frontier wherever you listen.
Kristen Ruisi:So we keep talking about international. Brands often scale quickly and globally. How early should trademark strategy go international?
Becky Liebowitz:As early as fiscally possible. So try to avoid the legal jargon here, but there's something called first to use and first to file. So in a lot of countries including the US, you develop rights through your trademark use. They're also called common law rights. So the second you start using a mark on a product that's being sold or shipped, then you have trademark rights in that...
Becky Liebowitz:At least that geographic area. You actually have to have the product in market. It's not just you've started promoting something on social media and then you don't actually hit market for six or nine months down the road. You actually to have the product in the market for those rights to accrue, but they do accrue once you start using it whether or not you filed. In most countries, if you file, you get the trademark rights.
Becky Liebowitz:This is true regardless of whether or not you've used it or if anybody else has used it first. The number of times that a client has come to me to say, I was talking to a potential distributor in x country. Those conversations fell apart after nine months. I wanted to start talking to this other distributor, but they told me that the first distributor filed a trademark in their name. What can I do?
Becky Liebowitz:Or I've been using this distributor in y country for five years. We're now looking to part ways. I wanna use somebody else. However, I've just discovered that that first distributor had obtained a trademark registration in their own name rather than our name. What can I do?
Becky Liebowitz:And in some countries, there's not a lot you can do. Other countries, may have... Or in those countries, you may have contractual claims or other things, in place. But, you know, the moral of the story is trademarks are expensive. Trademarks are also a lot like insurance.
Becky Liebowitz:You never know when you're going to need them until you actually need them. And when you sort of think about the world of IP and copyrights, trademarks, and patents, copyrights are sort of the cheaper smaller option. Trademarks are the slightly bigger than a breadbasket, and the patents are the ones that get pretty expensive pretty quickly. So, you know, my recommendation is to think about the countries where you do want to be in, where you might be manufacturing, where it could be problematic to your business if you can't get into down the road, Countries where you may be able to get more bang for your buck. So you can file one EU application that covers all
Kristen Ruisi:27?
Becky Liebowitz:27 countries. Thank you. Brexit messes me up. I can't remember the number. But, you know, think about these things.
Becky Liebowitz:And to the extent that your budget does allow for filing internationally, file internationally.
Kristen Ruisi:So then what I'm hearing you saying... And and let's particularly focus maybe on a client that has a smaller budget. They do want to launch globally. Are we advising them, like, these are the... You need the US.
Kristen Ruisi:You should register in the country that's manufacturing the product. Maybe we also think about China where there's a lot of pirates, and like you said, the EU where we're getting 27 countries protected for the cost of a little more than one. Is that the way that you go into it and strategize when, you know, their budget is small, I guess.
Becky Liebowitz:Yeah. I mean it's really about what their risk level is because again they get the ultimate decision on how much risk they're willing to take, how problematic it would be if they had to use a different mark in a particular country. I mean, look. I think everybody that has ever filed a trademark application either themselves or through an attorney has then promptly gotten bombarded with emails from things that look like the US Patent and Trademark Agency.
Becky Liebowitz:Yeah. Not not that. Never that. That is a scam. We ignore. Totally ignore it. Ask a lawyer that you know... Any lawyer really could tell you that it's a scam. They're probably going to get emails from a Chinese firm telling you somebody in China has filed or has security.cn domain name. Again, possibly scams, possibly not scams, and somebody actually has filed.
Becky Liebowitz:But, I've had clients that has happened to. Somebody else filed their mark in China and their response was we're never gonna be able to break into the Chinese market. We don't want to. It's cool. Let them have the mark there. Yeah.
Kristen Ruisi:Do you think there's ever a situation or have you had a client where this was the reality where there is a need to file in almost every country in the world? Or do we think that that's really, regardless of how famous your brand is, that it's not really necessary in some of these territories? And I ask that because also in my practice, when we are doing a global launch and a global filing, we're not searching every single country either because that's going to cost a lot of money. So maybe we search the key territories and we say, okay, if it's available here, it's likely available in this small country that we're going file. What are your thoughts on that?
Becky Liebowitz:So I too have clients that selling globally and sometimes selling globally through third party resellers or websites. So we don't necessarily know which countries we're going to be selling in right away, but we know that it is available in all 170. You're going help me out with that number.
Kristen Ruisi:Some of over a 170 countries. I know that. Yes.
Becky Liebowitz:So, they they want to be able to. In that case, we've used the Madrid filing system, which I don't want get too far into the weeds. I think there's a lot of pros and a lot of cons, especially for US applicants versus foreign applicants.
Kristen Ruisi:I agree.
Becky Liebowitz:But in this instance, it's a little bit of like a throw it against the wall and see what sticks method of filing where to your point, you're not searching. You're not clearing it everywhere, and maybe the client is never actually going to sell product into Algeria. Who knows? But if we can get it there and adding an extra country in IR isn't a big deal than an international registration, then we should do that. So I think, in that case, for some clients, if you have a secure home country registration that you can rely on since that's sort of key in a Madrid filing, doing a global filing designating all the countries. And when you get an office action in Algeria, let it go. Don't respond.
Kristen Ruisi:Got it. Alright. Let's turn to enforcement. How do you advise clients on when to enforce versus when to coexist and just and you kinda just, said that even with an office action. There are some instances where we just don't care.
Becky Liebowitz:Yeah. I think it always comes down to how much is this affecting your ROI, your bottom line, how detrimental is it to your business. Because trademarks are just as much about business as they are the law. I don't know if I've said that already or I've I've said it five times, but I say it, like, regularly.
Becky Liebowitz:So is the infringer that's out there, is it a one off that you can just sort of send a quick letter, do a takedown through a website, you know, quick little tap on the head and they go away, not a big deal, or is it a major player that is creeping closer to your space or your geographic marketplaces that you want to lock in and make sure that you work something out sooner rather than later? If you are going to work something out, are you yourself willing to limit yourself in any way? Because if you're going to enter in... Unless you are truly the senior player, the odds are you're going to...
Becky Liebowitz:In any negotiation, everybody always knows nobody walks away from negotiation happy, but it's sort of like getting to a place that everybody is comfortable with it. So if you are looking to enter into a worldwide coexistence with somebody, what are you prepared to limit yourself with or to give up in order to get that peace? So it's... I think all those things need to be thought about when you're considering an enforcement action, and what level? Again, if this is just a bunch of online scams, can you do DMCA takedowns, digital mill... Millennium Copyright Act takedowns.
Kristen Ruisi:Thank you.
Becky Liebowitz:You're welcome. Can you just do some other sort of takedown through the, you know, misuse of trademarks or something like that rather than full blown litigation?
Kristen Ruisi:Right. And and how do you feel about copycat dupe products? They're they're often quickly emerging, particularly on social media. Do you advise your clients to kind of ride it out or are we doing takedowns? And again, does it come down to how closely is it infringing versus can we let it go?
Becky Liebowitz:Yeah. I mean, it's how closely is it infringing, but I think especially in this market where we're talking about products that our clients and customers are either ingesting or putting on their skin and on their body. So does it contain an ingredient that is safe but wasn't disclosed in the packaging and somebody with an allergy then has a reaction to it? Is it a knock off that contains an ingredient that is actually not safe for human consumption or human application? I think because in this industry, these things actually pose physical risk and harm to consumers, I think it's more critical that we take action quickly and promptly as much as possible and police the marketplace whether or not that's through in house people, through outside counsel, through platform... Vendors and platforms, that... I mean, look. One of the benefits of AI these days is that it can actually scour the Internet and find all of these things. And and it's quick. And can pull these things down much more efficiently than a lawyer sending out
Kristen Ruisi:C and D letters.
Becky Liebowitz:Right. And then having to chase them. Exactly.
Kristen Ruisi:Let's move along and talk a little bit about trade dress because that kind of flows from the copycats and the dupes. It's very relevant in the beauty industry now. How viable is it as a protective strategy in your experience?
Becky Liebowitz:I think it's very viable, and I think it's a great tool for people to have in their arsenal. So... And trade dress, we're talking about potentially the product packaging. So we've done protection for elements of a bag.
Becky Liebowitz:We've done protection for bottles. The key thing with trade dress though that you have to think about is that you can't protect elements of it that are functional, and the odds are you will have to be able to show that it's been in use for a certain period of time in order to develop stronger rights. So I think it can be critical. I think there's also, with trade dress, there's often overlap with copyright and patent.
Becky Liebowitz:I mean, we've taken a lot of times where somebody, a colleague has been doing a design patent on something, and we use those same drawings to also do a trade dress application on our side of the house, which can be helpful because when patents and copyrights expire, you still have the trade dress protection in place if you've continued to be using it that whole time. So I think that they're an underutilized tool that, folks can certainly add to their arsenal if they're willing to be patient while those rights develop.
Kristen Ruisi:Right. And I think it's especially helpful for fighting dupes when they're copying a packaging.
Becky Liebowitz:Correct. Well, especially because you don't always know what elements the copycatters are gonna be copying it. Is it the entire product design? Is it the name? Is it the shape of a item of a, you know, gummy candy? Whatever it is.
Kristen Ruisi:Alright. Well, to wrap things up, looking ahead, what trends do you think will shape trademarks' strategy in the beauty industry over the next few years?
Becky Liebowitz:It's the same thing that is shaping the strategy of literally everything else in our lives at this point, which is dare to say it. Our AI overlords. You know, think whether or not it's because companies come up with things faster or rely on other avenues that look may get them into trouble. It might might keep us busier with litigation in the future because if they're going to do more things themselves, it can be useful. Again, when we were talking about on the enforcement side of things in scouring the Internet and finding things more easily to do takedowns.
Becky Liebowitz:I think there are a lot of pros and cons in trying to figure out the best way to incorporate AI. I probably will not be the person doing that since I'm going to fight it until the last minute. But
Kristen Ruisi:I hear you loud and clear. Alright. Well, one more thing. If you had to give one piece of advice to a beauty founder, what would it be?
Becky Liebowitz:Oh, that's such a good one. I mean, maybe don't forget about middle aged women's skin because it changes and we have different needs. So you've got a huge marketplace there. Focus on that.
Kristen Ruisi:I love that. Becky, thank you so much for being here. This was incredibly insightful.
Becky Liebowitz:Thank you. It was kind of fun. Yes.
Claudia Lewis:Okay. That's all we have time for today. I want to thank Becky for helping us better understand how beauty brands can think strategically about trademarks, trade dress, and global brand protection from the earliest stages of product development. You could read more about Venable's beauty and wellness team by visiting venable dot com slash beauty. I'm Kristen Ruisi.
Claudia Lewis:Thanks for listening to the Beauty Law Glow-Up.