image: VS

image: VS

The owners of Victoria’s Secret have filed a declaratory judgment lawsuit against high-end male clothier Thomas Pink, seeking a ruling that its “Pink” line of lingerie doesn’t infringe any trademarks. Victoria’s Secret’s filing (which occurred last week), follows LVMH-owned Thomas Pink’s May infringement action with the Patents County Court in the UK, accusing Victoria’s Secret UK of confusing consumers by selling products under the “PINK” name. According to its complaint, Victoria’s Secret is seeking clarification of “the rights of the parties, allowing them to continue the peaceful coexistence that has been in place for many years,” and also VS alleges that “the UK action places VS at imminent risk of a suit on the same grounds in the US.”

Interestingly, the lingerie giant’s younger collection, PINK, is quite a bit younger than the Thomas Pink brand, which appears to have used THOMAS PINK in the US since 1984. Victoria’s Secret, which has a range of PINK-variant registrations, first began using the trademark in 2001. While the dates alone make this case seem like a easy win for THOMAS PINK, the most difficult part of any trademark lawsuit is usually showing likelihood of confusion. Because one of the main functions of a trademark is to prevent consumer confusion as to the source of goods or services, establishing that there is a chance of confusion among the average consumer. Likelihood of confusion is not necessarily measured by actual consumer confusion, but by a series of criteria Courts have established (namely, the 9th Circuit in AMF, Inc. v Sleekcraft Boats). These factors include:

1. Strength of the mark.

2. Proximity of the goods – In this case, both brands are being sold in London.

3. Similarity of the marks (think: the appearance, pronunciation, meaning, and commercial impression of the respective marks) – If the marks are exactly the same in spelling and how they are pronounced (as is the case here), there is a greater chance of likelihood of confusion between them.

4. Evidence of actual confusion.

5. Marketing channels used.

6. Type of goods and the degree of care likely to be exercised by the purchaser – This factor is likely a bit tricky in this case. The goods are about the same: clothing (even though they are targeted to different genders), and while I would argue that consumers of THOMAS PINK are sophisticated buyers (due to the luxury and expensive nature of the clothes), I’m not so sure we can say the same about Victoria’s Secret PINK, as it is not a luxury brand, such as La Perla and it is geared towards teens.

7. Defendant’s (Victoria’s Secret in this case) intent in selecting the mark.

8. Likelihood of expansion of the product lines.