Xtreme Lashes, LLC and Xtended Beauty, Inc. both market kits used by professional cosmetologists to lengthen and accent clients' eyelashes.
Xtreme, the plaintiff, has used the marks XTREME LASHES and EXTEND YOUR BEAUTY since September 2005 and obtained registration of the marks in April 2008 and October 2007, respectively. The XTREME LASHES mark features a large X, part of which is formed by a stylized eyelash. The mark EXTEND YOUR BEAUTY is typewritten and always appears in conjunction with the XTREME LASHES mark. Each of Xtreme's kits come in a silver carrying case bearing the XTREME LASHES mark.
Xtended, the defendant, has used the mark XTENDED BEAUTY since July 2006. Xtended's mark features a large, type-written X and its kits come in a silver carrying case featuring the XTENDED BEAUTY mark.
Xtreme alleged that Xtended had infringed and diluted its marks. Xtended, in turn, counterclaimed, seeking cancellation of Xtreme's EXTEND YOUR BEAUTY mark.
Xtended moved for summary judgment on all of the claims before the parties conducted discovery. The District Court concluded that no reasonable person would likely confuse the parties' marks because they were so dissimilar and therefore entered judgment in favor of Xtended on Xtreme's trademark infringement and dilution claims. The District Court then later found that EXTEND YOUR BEAUTY was descriptive as a matter of law and therefore ordered Xtreme's mark cancelled.
On appeal, the Fifth Circuit reversed each of the District Court's conclusions. Although the Fifth Circuit could not say with certainty whether Xtreme's XTREME LASHES mark was strong or weak, it found that the mark at least had the indicia of a suggestive mark and, for purposes of summary judgment, was entitled to protection. Examining the other "digits of confusion" relating to the parties' XTREME LASHES and XTENDED BEAUTY marks, the Fifth Circuit found that each of the factors either favored Xtreme or were neutral; no factors favored Xtended.
Similarly, the Fifth Circuit found that the District Court had erred in finding no likelihood of confusion between the parties' EXTEND YOUR BEAUTY and XTENDED BEAUTY marks. As an initial matter, the Fifth Circuit rejected the District Court's finding that Xtreme's EXTEND YOUR BEAUTY mark was descriptive as a matter of law, concluding that "consumers must use 'imagination, thought and perception' to conclude that an exhortation to 'extend your beauty' markets eyelash extensions, as opposed to another cosmetically enhanced feature." The Fifth Circuit thus reversed the District Court's order cancelling Xtreme's registration of its EXTEND YOUR BEAUTY mark.
The Fifth Circuit then went on to conclude that there were issues of fact demonstrating a likelihood of confusion between the EXTEND YOUR BEAUTY and EXTENDED BEAUTY marks that precluded summary judgment and therefore reversed the District Court's order and remanded the case for further proceedings.
The Fifth Circuit's decision in Xtreme Lashes, LLC v. Xtended Beauty, Inc., No. 08-20578 (5th Cir. July 15, 2009), can be found here (PDF, 18 pgs).