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Delicious Trademark Dispute Not Appropriate for Summary Judgment

Trademark disputes aren’t usually appropriate for being decided on summary judgment.

That’s what the Ninth Circuit reiterated last week in Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Management, Inc.

In that case, Victoria’s Secret sold or gave away hot pink tank tops with the word “Delicious” printed across the front. The purpose of its efforts was to promote its BEAUTY RUSH beauty products.

Fortune Dynamic sued, alleging that Victoria’s Secret’s use infringed its incontestable registration for DELICIOUS for footwear.

As the Ninth Circuit later summarized, “Victoria’s Secret executives offered two explanations for using the word ‘Delicious’ on the tank top. First, they suggested that it accurately described the taste of the BEAUTY RUSH lip glosses and the smell of the BEAUTY RUSH body care. Second, they thought that the word served as a ‘playful self-descriptor,’ as if the woman wearing the top is saying, ‘I’m delicious.’”

The Central District of California granted summary judgment in Victoria’s Secret’s favor.

Fortune Dynamic appealed to the Ninth Circuit.

The Ninth Circuit reversed and remanded, finding that it was not appropriate for the district court to decide that no likelihood of confusion existed and that the fair use doctrine applied as a matter of law.

“This case is yet another example of the wisdom of the well-established principle that ‘[b]ecause of the intensely factual nature of trademark disputes, summary judgment is generally disfavored in the trademark arena,’” the court said. “We are far from certain that consumers were likely to be confused as to the source of Victoria’s Secret’s pink tank top, but we are confident that the question is close enough that it should be answered as a matter of fact by a jury, not as a matter of law by a court.

“The same is true of Victoria’s Secret’s reliance on the Lanham Act’s fair use defense. Although it is possible that Victoria’s Secret used the term ‘Delicious’ fairly — that is, in its ‘primary, descriptive sense’ — we think that a jury is better positioned to make that determination.”

The case cite is Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Management, Inc., __ F.3d __, 2010 WL 3258703, No. 08-56291 (9th Cir. Aug. 19, 2010).

Photo credit: Borrowed from The Briefcase: Commentary and Analysis of Ohio Law

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