Business Law 11th Edition by Kenneth Clarkson,Roger LeRoy Miller,Gaylord Jentz,Frank Cross

تمرين 3

Menashe v. V Secret Catalogue, Inc.
United States District Court, Southern District of New York, 2006. 409 F.Supp.2d 412.
• Background and Facts In autumn 2002, Victoria's Secret Stores, Inc., and its affiliated companies, including V Secret Catalogue, Inc., began to develop a panty collection to be named "SEXY LITTLE THINGS." In spring 2004, Ronit Menashe, a publicist, and Audrey Quock, a fashion model and actress, began to plan a line of women's underwear also called "SEXY LITTLE THINGS." Menashe and Quock designed their line, negotiated for its manufacture, registered the domain name www.sexylittlethings.com , and filed an intent-to-use (ITU) application with the U.S. Patent and Trademark Office (USPTO). In July, Victoria's Secret's collection appeared in its stores in Ohio, Michigan, and California, and, in less than three months, was prominently displayed in all its stores, in its catalogues, and on its Web site. By mid-November, more than 13 million units of the line had been sold, accounting for 4 percent of the company's sales for the year. When the firm applied to register "SEXY LITTLE THINGS" with the USPTO, it learned of Menashe and Quock's ITU application. The firm warned the pair that their use of the phrase constituted trademark infringement. Menashe and Quock filed a suit in a federal district court against V Secret Catalogue and others, asking the court to, among other things, declare "non-infringement of the trademark."
BAER, District Judge.
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Plaintiffs claim that Victoria's Secret has no right of priority in the Mark because "SEXY LITTLE THINGS" for lingerie is a descriptive term that had not attained secondary meaning by the time Plaintiffs filed their ITU application. Consequently, Plaintiffs assert that they have priority based on * * * their ITU application on September 13, 2004. Victoria's Secret counters that the Mark is suggestive and thus qualifies for trademark protection without proof of secondary meaning. Therefore, Victoria's Secret has priority by virtue of its bona fide use of the Mark in commerce beginning July 28, 2004.
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To merit trademark protection, a mark must be capable of distinguishing the products it marks from those of others.* * * A descriptive term * * * conveys an immediate idea of the ingredients, qualities or characteristics of the goods. In contrast, a suggestive term requires imagination, thought and perception to reach a conclusion as to the nature of the goods. Suggestive marks are automatically protected because they are inherently distinctive, i.e., their intrinsic nature serves to identify a particular source of a product. Descriptive marks are not inherently distinctive and may only be protected on a showing of secondary meaning, i.e., that the purchasing public associates the mark with a particular source. [Emphasis added.]
* * * [T]o distinguish suggestive from descriptive marks [a court considers] whether the purchaser must use some imagination to connect the mark to some characteristic of the product * * * and * * * whether the proposed use would deprive competitors of a way to describe their goods.
* * * I find "SEXY LITTLE THINGS" to be suggestive. First, while the term describes the erotically stimulating quality of the trademarked lingerie, it also calls to mind the phrase "sexy little thing" popularly used to refer to attractive lithe young women. Hence, the Mark prompts the purchaser to mentally associate the lingerie with its targeted twenty- to thirty-year-old consumers. Courts have classified marks that both describe the product and evoke other associations as inherently distinctive. * * * [Also] it is hard to believe that Victoria's Secret's use of the Mark will deprive competitors of ways to describe their lingerie products. Indeed, Victoria's Secret's own descriptions of its lingerie in its catalogues and Web site illustrate that there are numerous ways to describe provocative underwear. [Emphasis added.]
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* * * Victoria's Secret used "SEXY LITTLE THINGS" as a trademark in commerce beginning on July 28, 2004. Commencing on that date, the prominent use of the Mark in four stores * * * satisfies the "use in commerce" requirement * * *. Similarly, Victoria's Secret's prominent use of the Mark in its catalogues beginning on September 4, 2004, and on its Web site beginning on or about September 9, 2004, together with pictures and descriptions of the goods meets the * * * test * * *. I find that because Victoria's Secret made bona fide trademark use of "SEXY LITTLE THINGS" in commerce before Plaintiffs filed their ITU application, and has continued to use that Mark in commerce, Victoria's Secret has acquired priority in the Mark.
• Decision and Remedy The court ruled that Menashe and Quock were not entitled to a judgment of "non-infringement" and dismissed their complaint. The court concluded that "SEXY LITTLE THINGS" was a suggestive mark and that Victoria's Secret had used it in commerce before the plaintiffs filed their ITU application. For this reason, Victoria's Secret had "priority in the Mark."
• The E-Commerce Dimension Under the reasoning of the court in this case, would the use of a purported trademark solely on a Web site satisfy the "use in commerce" requirement Explain.
• The Legal Environment Dimension Why is it important to allow a trademark's assertive owners-in this case, the ITU applicants Menashe and Quock-to preemptively defend against the use of the mark by another party