Doc Brown once said that if you were going to build a time machine into a car, it made sense to do it with some style. According to DeLorean Motor Co.’s recent complaint against Elysian, the same isn’t true for makeup brands.
Elysian, a New York-based makeup brand, began marketing an age-suspending primer under the DELOREAN mark in the summer of 2017. DeLorean Motor Co. filed a complaint against Elysian last week, however, arguing that Elysian’s use of the DELOREAN mark in the makeup line is an attempt by Elysian to benefit from the “time-travel cache” of the DELOREAN mark.
There’s no question that the Back to the Future trilogy immortalized the fame of the DeLorean’s role as a time-traveling automobile. DeLorean Motor Co. cites the trilogy in its complaint various times, stating that the 2015 release of the 30th Anniversary edition of the trilogy resulted in “significant notoriety for the DELOREAN brand.”
DeLorean Motor Co., however, didn’t give all of the credit for its fame to the Back to the Future franchise. It stated in the complaint that spends thousands of dollars annually in advertising and promotion of the DeLorean brand. Because of those expenditures and the effort put into keeping the DELOREAN brand alive, the DELOREAN mark has remained famous for years.
In the complaint, DeLorean states that it plans to expand its line to other luxury goods, likely referring to its plans to relaunch the DeLorean in 2019. While DeLorean isn’t in the business of making cars at the moment, there are plenty of products that adorn the DELOREAN mark including t-shirts, belt buckles, and toy flux capacitors. Additionally, DeLorean still advertises its repair and replacement part service for existing DeLoreans.
DeLorean is worried about several different aspects of Elysian’s use. Specifically, DeLorean’s complaint refers to Elysian’s infringement of the DELOREAN mark and the dilution of the DELOREAN mark that can come from it.
DeLorean argues that if Elysian is allowed to use the DELOREAN mark on its products, consumers will think there is an association or promotion of the makeup line by DeLorean Motor Co. DeLorean also argues that Elysian’s use of the DELOREAN mark is a willful and blatant attempt to benefit from DeLorean’s expenditure of money and effort in developing the goodwill of the DELOREAN brand. Specifically, what seems to be benefitting Elysian here (according to DeLorean’s complaint) is the time-travel cache associated with the DELOREAN mark.
Additionally, DeLorean noted in the complaint that: “many luxury automobile makers associate their brands with fragrance or cosmetics or other non- automotive luxury products as a strategy to increase brand awareness and capture ‘aspirational’ consumers.” This is true. For example, BMW and Revlon teamed up in 2016 to design a set of makeup brushes. This trend implies that it would be reasonable for the average consumer to assume that DeLorean was sponsoring or affiliated with Elysian’s DELOREAN branded primer. This product association makes confusion as to whether DeLorean Motor Co. is affiliated with or sponsoring Elysian’s product more likely.
If Elysian is allowed to use the DELOREAN mark, there could definitely be an issue of dilution. When a famous mark (such as DeLorean) is used on an unrelated or unaffiliated product made and marketed by a different source (such as Elysian’s DELOREAN Age Suspending Primer), the famous mark is at risk of losing its distinctive status. Over time, this could mean that the famous mark owner (in this case, DeLorean Motor Co.) would lose trademark rights to that famous mark because it no longer signifies a specific source. DeLorean definitely doesn’t want this in the wake of its re-launch, which explains why they are fighting so hard to protect their ownership of the DELOREAN mark.
Do you think that DeLorean is being too intense in protecting its mark? I think it has a good chance of winning this one, especially because of the history behind the DELOREAN mark and its long-lasting fame. The case of infringement here is especially convincing in light of the DELOREAN mark’s association with time-travel and Elysian’s clear attempt at trading on that very association with its DELOREAN Age-Suspending Treatment Primer.
Author, Caroline Womack, is a 2L at Quinnipiac University School of Law and primarily studies intellectual property law, focusing on video game and internet law.