I guess I should clarify, by “clash with” I mean “infringe.” By “Pink” I mean “Victoria’s Secret Pink” and by the other “Pink” I mean Thomas Pink and yes, I understand that the phrasing of this entire endevour may be a bit confusing.

What do you think? If you walked into this store:

 

Would you assume there was some connection with this store?

In case you haven’t read the previous article, Thomas Pink, U.K. retailer of high quality men’s fashion dress clothes sued Victoria’s Secret over their “Pink” stores, which are geared primarily toward college-aged girls. Victoria’s Secret filed a declaratory judgment action in the U.S., but that was dismissed back in May based on a settlement between the parties. But the British court issued a ruling on August 4, ruling that Victora’s Secret’s use of the PINK mark as a store name does, in fact, legally clash with Thomas Pink’s use of PINK.

We talk a lot on Duets Blog about the difference between the right to register a trademark versus a right to use a trademark. (See Steve’s post and accompanying links here). Essentially, the idea is that when you are seeking to register a trademark, you are given the right to use that mark in any shape, style, or form, unless specifically noted. So if you apply to register the word MISGUIDED in connection with “legal opinions,” the U.S. Patent and Trademark Office would look to see whether the proposed registration would conflict with any prior registration (or live application), for marks confusingly similar to MISGUIDED, regardless of whether it appeared with an image of a powdered wig, whether it was in Arial font or Cambria, or whether it was used with the color black or the colour blue. Or pink, too.

The idea is that, unless a restriction on use is actually in the application (or prior registration) the Trademark Office will not look to see how the mark is actually used in the real world. It doesn’t matter whether the house mark NIKE always appears with NIKE AIR, if you’ve applied (or registered) AIR on its own, the Trademark Office will give the broadest interpretation possible to the marks as set forth in the application or registration. This leads to the oft-cited rule that merely adding (or deleting) a term from a previously registered mark is insufficient to avoid a likelihood of confusion if the goods or services are related (unless the term is diluted, but let’s leave that for another post…).

However, when we speak of the right to use, we usually are speaking in the context of a lawsuit for trademark infringement. Because that’s how you stop someone from using a trademark. (Cease and desist letters can work, but only under the threat of infringement, so the issue would still be the same). In this context, the defendant is free to cite any evidence regarding the party’s use which might help consumers avoid any confusion. For example, do the defendants and plaintiffs consistently use a house mark in connection with the mark (does “Victoria’s Secret” always appear below the term “Pink” and does “Pink” always appear as part of “Thomas Pink”?), are the target customers sufficiently different such that consumers wouldn’t presume a connection between the two uses (would I expect these University of Minnesota booty shorts to have some sort of connection with a high end menswear fashion designer?), whether the defendant only uses the name as an store that is attached and connected to their primarily store of a different flagship name, and other factors like the cost of the goods, advertising, number of third-parties using similar marks, etc.

British Judge Colin Birss has been quoted as concluding that “Consumers are likely to enter one of the (Thomas Pink) claimant’s shops looking for lingerie and be surprised and disappointed when they find they have made a mistake.” I guess that’s possible. But if consumers never refer to “Thomas Pink” products as anything other than “Thomas Pink” they seem unlikely to enter into a Victoria’s Secret store  thinking it is some different version of the Thomas Pink brand. They might also wonder why, unlike every other Thomas Pink store, the signage is in bright pink rather that the black and gold of the Thomas Pink stores. Oh, and they might also notice that instead of the words “Thomas Pink, Jermyn Street London” the words “Victoria’s Secret” appear on the front of the store.

My apologies for wearing my opinion on my sleeve, but I don’t think there is any infringement here. It turns out, Judge Birss agrees. Sort of. If you read any of the news reports, you’ll basically just see that the use was found to be infringing and Victoria’s Secret may have to close their stores. But if you read the decision (H/T – IPKAT), it’s more complicated. The judge concluded that:

Even inside a free standing PINK store there is sufficient emphasis on VICTORIA’S SECRET to counteract what might otherwise have been a likelihood of confusion under Art 9(1)(b) relating to the swing tags and labels.

Ultimately though Judge Birss found that Victoria’s Secret had violated Article 9(1)(c). Although I have lived and worked in the U.K. (just blocks from the Thomas Pink flagship store on Jermyn street, actually, – take the tube to the Piccadilly Circus station. Don’t get the sushi from Tesco), I’m not an expert in trademark law under U.K. or E.U. law. However, the difference between subsection (b) and (c) appears to be whether there is a confusion as to the goods (section b) or whether there is a confusion as to some type of endorsement or association that could be “detrimental to the distinctive character” of the prior mark.

Notwithstanding the quoted language when deciding the case under subsection b, the judge concluded that, under subsection c:

In my judgment average consumers who are familiar with the claimant’s reputation will encounter the defendant’s swing tags and labels and will enter the defendant’s premises with a view to buying the defendant’s goods complained of in this action.

An average consumer presented with swing tags or labels inside one of the defendant’s stores will appreciate from the context that it relates in some way to VICTORIA’S SECRET . . . However crucially what they will see is a sign very similar and reminiscent of the claimant’s sign. It does not include the full name Thomas Pink nor the Jermyn Street address, but the key element is the word PINK itself. It is even presented in a format which is reminiscent of the claimant’s PINK outlined format[.]

Victoria’s Secret will likely appeal the ruling. Or maybe the parties will settle. It appears though that the consequences for Victoria’s Secret are not as dire as some news reports suggest (i.e., having to close all of their “Pink” stores). Based on the judge’s ruling, it may be as simple as changing the font on the exterior of the sign (even I’ll admit that block letter font is pretty similar). Which brings us back to where (wear?) we started: the U.S. Trademark Office wouldn’t consider what font you’re using for your trademark, unless you’re applying for a stylized version. But like the British court, a U.S. court examining a claim of infringement would. Seems like a great way to put a (pink?) bow on this issue.