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Fortune Dynamic Inc v Victorias Secret Stores Brand Managent Inc

Fortune Dynamic, Inc v. Victoria’s Secret Stores Brand Management, Inc
618 F.3d 1025 (2010)
9th Circuit

Facts: Fortune is a shoe designer, which owns a trademark on a “Delicious” mark. Victoria’s Secret ran a marketing campaign for its new line of beauty products by giving out promotional tank tops with the word “delicious.” Fortune sued Victoria’s Secret for trademark infringement. Victoria’s Secret raises the defense of fair use.

Procedure: The district court denied Fortune’s motion for a preliminary injunction and granted summary judgment for Victoria’s Secret, and holding that Fortune’s claims were bared by fair use.

Issue: Whether Victoria’s Secret’s use of the word “delicious” on its tank tops is trademark infringement, and if so, whether it can prevail on the defense of fair use.

Holding: There is a genuine issue of material fact as to (1) whether the trademark was infringed, and (2) whether Victoria Secret’s use was fair. Reverse and remand for trial.

Analysis:

To prove infringement, a trademark holder must show that the defendant’s use of the trademark is “likely to cause confusion, or to cause mistake, or to deceive.” 15 USC § 1125. To determine if defendant’s use of the mark is likely to confuse customers, the court considers 8 factors:

1. The similiarity of the marks;
Here, the marks are different colors, fonts, and sizes, and are placed on different kinds of products. The marks are similar because in both marks the word appears alone. It seems likely that a consumer could see a person on the street wearing a tank top with this word on it and not know which brand the consumer was supporting, so a jury could reasonably conclude that this factor favors either party.

2. The strength of plaintiff’s mark;
Here, the court notes that the more recognizable the mark is to consumers, the more protection it will receive. The court here concludes that Fortune’s mark may not be suggestive or descriptive because of the multiple meanings that the word “delicious” carries. A jury could reasonably conclude that this factor favors either party.

3. The proximity or relatedness of the goods;
Here, both products are tangible goods that are marketed towards the same demographic. The court concludes that womens’ shoes and apparel are closely related in the minds of consumers, so a jury could reasonably conclude that this factor favors fortune.

4. Defendant’s intent in selecting the mark
Here, since Victoria’s Secret did not investigate whether “delicious” was being used as a trademark, there is less evidence that it intended to trade on Fortune’s goodwill.

5. Evidence of actual confusion
Here, the court notes that survey evidence may establish actual confusion. The Marylander Survey, which the district court excluded, suggested that over half of the surveyed people confused the two brands. The court concludes that this creates a genuine issue of material fact as to whether consumers confuse the brands.
6. Marketing channels used
Fortune is primarily a wholesaler of shoes, while Victoria’s Secret is a retailer of clothing.

7. Likelihood of expansion into other markets
Fortune licensed its trademark to a clothing brand, which shows that there is a likelihood of expansion for Fortune into the apparel industry.

8. Degree of care the purchasers of defendant’s products would exercise
Here, the court notes that while consumers are inclined to use less care when dealing with inexpensive products (leads to increased confusion). While Victoria’s Secret argued that fashion-conscious consumers are less likely to confuse brands, the court agrees with Fortune that since there is no clear standard to approach this factor, it is unclear how sophisticated or careful this demographic of shoppers is.

The defense of fair use requires Victoria’s Secret to prove that it used “delicious” not as a trademark, and in a descriptive sense. The less purely descriptive a defendant’s use of a term is, the less likely it is to prevail with fair use. The court here reasons that Victoria’s Secret may have used the word as a trademark because “delicious” is written in large letter across the front of the tank top to draw attention, in the same way it used its other trademarks on tank tops. As for the second factor, the court concludes that there is evidence that Victoria’s secret chose the work “delicious” in a non-descriptive way because of its lack of precautionary measures to see if this word was already in use, and because the plethora alternative available words for this purpose indicates that it was used more as a suggestion than description.


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