Two competitors that aren't seeing eye to eye appear headed for trial so a jury can resolve a legal battle over a beauty business fad — lash extensions.
It's no hair-splitting matter to Xtreme Lashes and Xtended Beauty Inc., which both sell kits for the trendy and expensive procedure used by Hollywood divas and wannabes when mascara and stick-on false eyelashes just aren't enough.
The hours-long process, in which individual hairs are attached to existing eyelashes to lengthen them, is marketed as a beauty enhancement — a concept even a federal appeals court panel conceded is fuzzy.
"Extend Your Beauty" is the buzz phrase used by suburban Houston-based Xtreme Lashes, which touts itself as the "global leader in eyelash extensions." The company scurried to court two years ago to halt similar-sounding Xtended Beauty Inc. of Hayward, Calif.
That business was marketing its own eyelash extensions with packaging and branding that Xtreme Lashes insisted was too much alike and confusing to cosmetologists who buy the products.
Trademark protection for phrase?A federal district judge in Houston tossed out the lawsuit from Spring-based Xtreme Lashes, whose products are significantly more pricey than its competitor's. The company didn't blink, appealing to the 5th U.S. Circuit Court of Appeals in New Orleans. Last week, that court said a jury would best be able to determine if confusion exists and if "Extend Your Beauty" should be protected as a trademark, like Nike's "Just Do It."
"It's a huge victory, a huge success," said Charles Sturm, a lawyer for Xtreme Lashes.
Sturm said Tuesday that Xtreme Lashes, which distributes its product to 22 countries, has trained 6,000 beauticians in the U.S. and 10,000 worldwide and estimates it has 60 to 65 percent of the market.
Paul Van Slyke, who represents Xtended Beauty, said the company was not discouraged. "There really was nothing in the 5th Circuit ruling that said they couldn't win at trial or in any way was disheartening."
Xtreme says in court documents that it has spent $1.3 million since 2005 through direct mail, magazine ads and trade show presentations to promote its products, which come in two versions — "gold" costing $529 and "platinum" at $949. Each kit comes in a silver case marked with a large X.
Xtended has been marketing at trade shows and trade publications since 2006, selling kits for $345 that come in silver cases that feature a large X.
Lashing outXtreme argued that Xtended "infringed and diluted its marks." Xtended lashed back, moving for summary judgment and bolstering its case with a report from a trademark search specialist who said the misspelled form of "xtreme" is common in the beauty industry and that the phrase "extend your beauty" is used by at least 30 personal grooming firms around the world.
Houston-based U.S. District Judge Lynn Hughes agreed, saying no reasonable person could be confused and there was no need for a trial.
"We disagree," said a three-judge panel of the 5th Circuit. "Even if a person recognized that the marks are not identical, she might believe that Xtended Beauty is a product line offered by the makers of Extreme Lashes, such as a discount line."
Xtreme showed several incidences of confusion, including an affidavit filed by one cosmetologist who "did not bat an eyelash," wrote 5th Circuit Judge Harold DeMoss, before buying a kit from Xtended when she thought she was buying from Xtreme.
"Actual confusion weighs strongly in Xtreme's favor," the court said. "On the whole, we believe that the evidence on record creates a genuine issue of fact and the case should be tried to a jury."
Attorneys said a trial is at least a year away.