Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Management, Inc

618 F.3d 1025 (9th Cir. 2010)

Purchase the Printed Copy at bsmsphd.com

Nature of the Case

To access this section all you need to do is click here and register.

Facts

D ran a one-month marketing campaign promoting its new line of BEAUTY RUSH products. As part of that promotion, D sold or gave away a hot pink tank top with the word 'Delicious' written across the chest in silver typescript. P is the owner of the incontestable trademark DELICIOUS for footwear. P sued for trademark infringement. P has been in the business of designing and selling footwear for women, young women, and children. In 1997, P began using DELICIOUS as a trademark on its footwear for young women. Two years later P registered the DELICIOUS trademark for footwear. P spends approximately $350,000 a year advertising its footwear. From 2005 to 2007, P sold more than 12 million pairs of DELICIOUS shoes. The shows have appeared in fashion magazines directed specifically to young women, including Cosmo girl, Elle girl, Teen People, Twist, In Touch, Seventeen, Latina, ym, Shop, CB, marie claire, and Life & Style. D is a well-known company specializing in intimate apparel. D offered two explanations for using the word 'Delicious.' D suggested that it accurately described the taste of the BEAUTY RUSH lip glosses and the smell of the BEAUTY RUSH body care. They claimed the word served as a 'playful self-descriptor,' as if the woman wearing the top is saying, 'I'm delicious.' D did not conduct a search to determine whether DELICIOUS was a registered trademark. D moves for summary judgment. P submitted two pieces of expert evidence: the Marylander survey (with an accompanying declaration) and the Fueroghne declaration. The district court excluded all of P's proffered expert evidence. It granted D's motion for summary judgment in that the likelihood of confusion 'weighed in favor of D,' and that P's claims were 'entirely barred by the fair use defense.' P appealed.