Since May of 2013, a legal battle has been brewing between two fashion industry giants: Victoria’s Secret and Thomas Pink (owned by Louis Vuitton). Below are pictures of storefronts for the two companies:
Thomas Pink began as a U.K. company and is known for its menswear, primarily shirts, ties, and other dress clothes. Thomas Pink is the owner of U.S. registrations for the THOMAS PINK and PINK THOMAS PINK JERMYN STREET and Design marks, and claims to have begun using the mark as early as 1984.
Victoria’s Secret is a U.S. company that sells women’s clothing exclusively, and is most recognized for its line of lingerie and undwear. In 2001, Victoria’s Secret began selling women’s clothing under a line called PINK or VICTORIA’S SECRET PINK targeted toward college aged women. Victoria’s Secret owners numerous U.S. registrations for PINK-based marks for use on clothing, including VICTORIA’S SECRET PINK, PINK U, LIFE IS PINK, FOREVER PINK, and more.
Last May, Thomas Pink filed a trademark infringement action in the U.K. In response, Victoria’s Secret filed a declaratory judgment action in the United States on July 24, 2013. Normally, this would be a pretty straight forward case of infringement. The goods are nearly identical, as both Victoria’s Secret and Thomas Pink sell women’s clothing (although it doesn’t appear that Thomas Pink sells lingerie). Thomas Pink likely has priority as they claim use of the mark back to 1984 for clothing and 1997 for retail store services.
The only real issue is where there is a likelihood of confusion between the marks. This seems like a pretty tough case for Victoria’s Secret. PINK appears to be the dominant portion of the mark and Victoria’s Secret has adopted this as its companion store name. If I were to start a clothing company, drop the TOMMY and begin selling clothing under the brand HILFIGER, well, let’s say I wouldn’t like my chances. Should it be different here when the dominant portion is PINK instead?
Just last year we received some guidance in the Louboutin decision as to whether colors themselves can serve as trademarks in the fashion industry. But what about the standard character representation of a color? Does that limit the scope of protection for THOMAS PINK? There are a great number of U.S. registrations for marks for clothing incorporating the term PINK, including: ELECTRIC PINK, PINK OPS, PINK STUFF, PINK REPUBLIC, PINK MEMORIES, U.S. PINK, TEAM PINK, PARKER PINK, Under Armour’s POWER IN PINK and also Ralph Lauren’s PINK PONY:
With all of these registrations, it may be difficult for Thomas Pink to claim rights to PINK standing alone. There are at least two registrations that have disclaimers of the term PINK. Given all the foregoing, it will be interesting to see how much protection courts will give to the THOMAS PINK mark.