In 1984, three Irish brothers entered into the world of entrepreneurism when they created Thomas Pink Ltd., a luxury-clothing brand based in London. This UK-based company, selling both men and women’s clothing, expanded its brand and eventually became a part of LVMH (Louis Vuitton Moët Hennessey). Today Thomas Pink has approximately 90 stores worldwide.
In 1977, Stanford Graduate Business School alum Roy Raymond entered into the world of entrepreneurism when he created a lingerie company named Victoria’s Secret, Inc. In 1982, Mr. Raymond sold Victoria’s Secret to Limited Stores, Inc., an Ohio-based corporation, for $1 million. Victoria’s Secret came to be the largest U.S. retailer of lingerie and, in October 2002, announced that it would be launching a new company brand labeled Pink, which was to target younger women ages 15-22 years old. That brand actually launched in 2004.
It was stated that having a trademark restricts other businesses from branding their products/services in a way that will cause brand confusion between their products and yours. Thomas Pink was very aware of this fact because in 2012, when Victoria’s Secret attempted to expand its Pink brand to the UK by opening up retail stores, Thomas Pink filed a trademark infringement case in the high-court of London, claiming that the Victoria’s Secret ‘Pink’ brand was too similar to the Thomas Pink brand and trademarks.
Last week, on July 31, the High Court ruled in favor of Thomas Pink holding that, as Judge Colin stated in his written opinion, “Consumers are likely to enter one of the claimant’s shops looking for lingerie and be surprised and disappointed when they find they have made a mistake.” This came after Thomas Pink submitted evidence that showed that the UK-based retailer had several customers try to return Victoria’s Secrets products in its stores and had other customers who asked to buy Pink goods, only to be surprised to learn that the company did not stock lingerie.
The result is that Victoria’s Secret may have to stop using the ‘Pink’ trademark and completely re-brand this particular product offering in the UK market.
This case is a prime example of the threshold used to determine whether a given company or individual is infringing on the trademark of another: the likelihood that consumers in the marketplace would be confused as to the origin of the goods.
But how does the Court actually assess this threshold? In the U.S. there is a well-established list of factors that are taken into account:
Strength of the Mark – The more distinctive the mark the more likely that there will be confusion. Marks are considered strong or distinctive when they can be classified as fanciful or arbitrary. In this case, Pink was seen as arbitrary because it did not describe the products or have any direct relation to the goods.
Similarity of the Marks – The more similar the marks the greater the chance of confusion. The Court looks at everything from design, to phonetics, to colors used. Both of the marks in this case consisted of the same word, Pink. Although the typeface for the two marks was not exactly the same, it was similar enough to create a likelihood of confusion.
Similarity of Products or Services – The more related the goods and/or services of the two companies, the greater the chance for confusion. This factor wasn’t as straightforward in this case. Although both companies are clothing companies, Thomas Pink’s main business is that of selling luxury clothing, mostly shirts and ties, to men, while Victoria’s Secret is in the business of selling lingerie. However, because Thomas Pink sales men’s underwear, and because Thomas Pink sales women’s clothing, and because Thomas Pink is under the umbrella of LVMH (which has stores that sale lingerie), the Court held that it is likely that there could be consumer confusion.
Likelihood That the Senior User will ‘Bridge the Gap’ – This asks how likely is it that the company or individual who first used the mark will transition into selling the same or similar products as the junior company using the mark. The more likely the transition, the greater the chance for confusion. In Victoria’s Secret’s case, because Thomas Pink was already in the business of selling woman’s clothing and men’s underwear, it is not farfetched to think that they could bridge the gap to selling women’s lingerie.
The Junior User’s Intent in Adopting the Mark – If it is seen that the junior user of the mark adopted the use of the mark in bad faith (i.e. knew about it’s existence and tried to benefit monetarily from it’s established market presence), a likelihood of confusion will probably be found. This case did not have a finding that Victoria’s Secret adopted the mark in bad faith.
Evidence of Actual Confusion – The more evidence that can be shown that consumers were actually confused, the greater the chance that the court will hold that there is a likelihood of confusion. In this case, Thomas Pink showed evidence that some customers had entered into their retail stores attempting to return Victoria’s Secrets goods and other customers asked about purchasing Victoria’s Secret’s Pink products.
Sophistication of the Buyer/Degree of Care Exercised in the Purchase– The less sophisticated the average buyer is for the specific product or service, the greater the likelihood of confusion. Likewise, the greater the degree of care that is exercised during the purchase, the less likely that there will be a likelihood of confusion. Courts usually associate a greater degree of care with more expensive purchases. Here, there isn’t an inherently high level of sophistication of buyers or level of care used to purchase these products, although one could argue that a certain level of sophistication and care comes with the territory of purchasing luxury-clothing goods.
Quality of the Junior User’s Products/Services – If it is seen that the products or services of the junior user are of a much lesser quality than the senior user, the court is more prone to find that a likelihood of confusion exists, which could potentially lead to brand dilution of the senior user’s mark. The Court in this case actually did make note of the quality of Victoria’s Secret’s Pink products in relation to the luxury clothing of Thomas Pink and stated that the association could cause a “detriment to the repute” of its brand.
The above-mentioned factors are not all inclusive; some circuits use a variation of the list. However, those are the basic factors used to assess whether trademark infringement exists in any particular case. In an upcoming article, I will give further explanation of a few of the factors, including Strength of the Mark, which is something that must be assessed when filing for a Federal Trademark. If you believe someone is infringing on your mark, or if you think you may be infringing on another company’s mark, be proactive and consult an attorney to figure out the merit of your claim and your options moving forward.