The Nail Art Intellectual Property Wars
How a big nail polish brand copied bloggers and went on to trademark their idea.
On April 10, 2012, a number of bloggers who write about nail polish received cease and desist letters from a British company called Ciaté. Ciaté insisted that the bloggers remove how-to posts they'd written about something called the "caviar manicure." This manicure involves applying tiny beads to the top of wet nail polish so that they look like they've been dipped in caviar. On March 26, Ciaté began selling a $25 set that includes the beads and polish in one package, for which they've received a fair amount of enthusiastic press. One blogger posted the letter from Ciaté :
"It has come to our attention that you are using the mark caviar manicure and/or caviar nails in relation to a manicure product/method of manicure.
This relates to post on the 30th March ‘Caviar Nails Again’ as per link below:
Brand Agency Limited (Ciate) own the trade marks caviar manicure and caviar nails and we are in the process of applying to register these mark around the world.
Therefore you should not use the trade marks caviar manicure and/or caviar nails unless they are used in relation to products or to a method of using products that are produced by Ciate.
Please confirm once you have removed references to our trade marks from your website."
The bloggers were outraged. They noted that celebrity nail artist Pattie Yankee coined the term "caviar manicure" in 2010, and that other bloggers had been using the same materials for years prior. They weren't copying Ciaté, they argued — Ciaté was copying them. Was the brand trying to bully them into giving them sole credit for the idea, and represent their kit as the only way to achieve the look?
"I did originate the name of Caviar nails," Yankee wrote in an email to BuzzFeed Shift. She explained that she created the caviar manicure in February 2011 when she adorned models nails with tiny black beads for the Cushnie Et Ochs fashion show. "I named the nail look 'caviar manicure' backstage for the press," she continued. Indeed, Refinery 29 did refer to the manicure as "caviar" at the time.
The tight-knit nail polish blogging community was outraged — not so much that Ciaté had taken their idea, but that they were being asked to not use the name they had invented. In response, a number of them rallied behind Yankee and posted tutorials with altered names like the "fish egg manicure."
"Ciate made a big mistake sending out those letters. You don’t see Chanel kicking up a shitstorm when people try to find cheaper alternatives to their limited edition shades," wrote Pam Pastor on her blog, Polish Police.
In an email to BuzzFeed Shift, Pastor elaborated: "I think the nail world is big enough to accommodate both high end options and cheaper alternatives. There will always be a market for both. There's no need for cease-and-desist letters — let people make an informed decision when buying nail products."
Rebecca Tushnet, a law professor at Georgetown, wrote in an email that "even if there is a valid trademark," there's a question of whether "there is any legal basis for telling bloggers not to use the term." She explained that if bloggers "are not using [the name 'caviar manicure'] to 'brand' their own goods or services that they sell, that shouldn't be a trademark problem, any more than making 'Oreos' at home would be; but of course it is possible to send out threatening letters even when there isn't a winnable claim."
Yankee says she sought legal advice when Ciaté's caviar manicure came out. "I actually spoke to a couple attorneys who said I would have a case based on common trademarking laws, but it would take a huge amount of funds to fight it" — which Yankee doesn't have.
Although Yankee was possibly the first to refer to the look as the "caviar manicure," after having done it, it doesn't appear she ever specifically sold the service as such.
"Did the coiner of the phrase sell a product called 'caviar manicure'? If not, no protection — you get no rights just for coining a phrase, unless you use it commercially," Guillermo Jimenez, a professor of law at the Fashion Institute of Technology, told BuzzFeed Shift. "But if the term caviar manicure has become known widely already for that type of product, the term could already be 'generic' or 'descriptive' — difficult or impossible to protect with trademark for Ciaté."
Susan Scafidi, the Director of the Fashion Law Institute and a professor at Fordham Law School, pointed out that by sending the cease and desist letters, Ciaté might be trying to ensure that the term "caviar manicure" is not viewed as generic. "If an examiner in the Trademark Office searches online and finds out that nail technicians have been referring to bead manicures as "caviar manicures" for years and that bloggers are now doing the same, then the Trademark Office might decide that it's just a generic term for that type of manicure and deny the registration," she wrote in an email. "The company that has applied for the mark seems to be trying to make sure that doesn't happen by shutting down generic references."
Yankee did contact Ciaté. "They stated since they had a patent on the name, it was just to protect them, so they don't get hit with lawsuits on something not associated with their product," she explained.
Bloggers were also frustrated that Ciaté was "in the process" of registering the trademarks around the time the letters were sent in late March and early April. According to trademark documents, the caviar manicure wasn't officially registered as a trademark in the U.S. until April 23, 2012, but with a "priority date" of March 12, 2012, the date the trademark was approved in the U.K., where Ciaté is based. In other words, they had the U.K. trademark when they sent the letters, and were on the way to getting their U.S. version approved. At the time of publication, Ciaté had not responded to requests for comment on the matter.
In July, Ciaté also released a "velvet manicure," a trend similarly plucked from bloggers and independent nail artists who have figured out how to amp up nails with supplies available at craft stores. How vigorously Ciaté plans to defend ownership of the velvet nail concept remains unclear.
A spokesperson for Ciaté writes:
"March 2012 saw the launch of Ciaté Caviar Manicure, at this time we were in the process of trade marking the name "Caviar Manicure" in order to protect our packaging, this is a standard procedure most products by brands worldwide will go through. Unfortunately, during this sensitive period for us, 7 bloggers who had re-created the look calling it the "Caviar Manicure" received a letter from our legal team. The letter requested avoidance of use of the term "Caviar Manicure" and the reasons were politely explained. Unfortunately, some bloggers misread this as a cease and desist notice, which it was not. It was never our intention to cause any upset or distress to the blogging community who have always been so very supportive to Ciaté. An apology was immediately issued and indeed published online by one of the 7 bloggers who had received the initial letter."
Charlotte Knight, the company's founder also offered a personal apology, saying:
"We hope to mend the relationships with those 7 bloggers who we have unintentionally offended."