Another father-daughter trip to Bath & Body Works (BBW) this past weekend revealed that his and her Twilight Woods personal body care products are still available for sale:

Still, because ten days ago, the federal district court in the Southern District of New York rejected BBW’s attempt to have the trademark infringement and dilution claims — asserted by the owner of the Twilight Saga film series and franchise — dismissed on summary judgment.

Because BBW was unable to convince the court to dismiss the trademark and trade dress claims brought by Summit Entertainment, the case will now proceed to a trial before a jury, it appears.

As our friends over at Likelihood of Confusion pointed out last summer, counsel for BBW wrote and submitted a pretty impressive summary judgment brief, here are the opening lines from it:

This is a case about over-reaching. There is no doubt that Summit Entertainment, LLC (“Summit”) has a popular series of teen vampire movies, The Twilight Saga, but it is a basic premise of trademark law that rights in one market do not create rights in another market. That is why Unilever’s DOVE dishwashing detergent can coexist with Mars’ DOVE chocolates. This is particularly true where the trademark in question, TWILIGHT, is a common, descriptive English word and not an arbitrary term like KODAK. Also, Bath & Body Works Brand Management, Inc.’s (“BBW”) accused marks are not merely the word “twilight” alone, but are compound marks—TWILIGHT WOODS and TWILIGHT CRUSH—that refer to the name of a fragrance and an eye shadow color. Nevertheless, Summit believes that it has the exclusive right to use the word “twilight” across the full spectrum of goods and services. Make no mistake, Summit is not seeking to prevent harm to its franchise, but to obtain a windfall.

This case has been in litigation for three years now, and it was early-on painted by TechDirt as yet another example of Summit Entertainment’s trademark bullying.

Trademark Musings highlighted the apparently inconsistent positions taken by Summit, asserting likelihood of confusion against BBW’s Twilight Woods products on the one hand, and arguing against likelihood of confusion when the USPTO initially refused registration of Summit’s TWILIGHT mark for personal care products in Int’l Class 3, based on a prior federal trademark registration owned by Coty at the time (more than a year after the present case commenced, Bath & Body Works acquired Coty’s TWILIGHT trademark registration for “soaps, perfumery; essential oils; cosmetics; cosmetic hair lotions,” and now claims to have priority over Summit for personal body care products).

Notwithstanding BBW’s later acquisition of Coty’s federal trademark registration for TWILIGHT, the timing and origin of BBW’s Twilight Woods brand appears suspect. Summit released the first Twilight movie in the series on November 21, 2008, and about four to five months later, in April 2009 (after rejecting numerous other possible brand names for a new woods-oriented fragrance), BBW’s V.P. of Brand Development, its Director of Category Merchandising, and another member of BBW’s brand team conducted some brainstorm sessions (largely via text messages) to come up with Twilight Woods. BBW was reportedly on notice of consumers associating the products with the highly successful film early on during testing and thereafter, although it did obtain an opinion of counsel blessing the use of Twilight Woods as a brand name for personal care products.

Nevertheless, in denying BBW’s attempt to short-circuit Summit’s claims without the need for a trial, the court concluded that “a reasonable jury could find based on BBW’s surrounding conduct that it adopted the Twilight Woods and Twilight Crush marks with the intent to capitalize on Summit’s good will.” In considering all the likelihood of confusion factors, the court ruled:

Upon review of all of the [likelihood of confusion] factors, the Court is compelled to deny BBW’s motion for summary judgment. When viewing the evidence in Summit’s favor, as the Court must on BBW’s motion, the Court finds that one factor, actual confusion, favors granting BBW’s motion for summary judgment. One factor, the quality of BBW’s products, is neutral. The remaining six factors — strength of the mark, the similarity of the marks, proximity of the products, “bridging the gap,” bad faith, and the sophistication of consumers — to varying degrees weigh towards denying BBW’s motion. Thus, although the [likelihood of confusion] analysis is not generally reducible to a mechanical counting exercise, a clear majority of factors here weigh in Summit’s favor. Moreover, the Second Circuit has explained that strength, similarity, and proximity are generally the three most important [likelihood of confusion] factors, and all of those three critical factors favor Summit.

To the extent you’re wondering why BBW’s purchase of Coty’s TWILIGHT registration didn’t provide BBW with a get-out-of-jail-free-card, the court had this to say:

BBW has failed to establish that there is no genuine issue of material fact as to whether Coty’s Twilight mark has priority over Summit’s Twilight mark. Summit used the Twilight mark in commerce at least as early as April 18, 2008, for the production and distribution of Twilight Motion Pictures and at least as early as May 1, 2008, for clothing and merchandise related to Twilight. Both of these dates are prior to BBW’s alleged priority date of June 18, 2008, based on the assignment from Coty. Accordingly, BBW has not established as a matter of law that it has priority over Summit with respect to the Twilight mark.

Ironically, this case started as a cease and desist letter from Summit Entertainment to BBW, and BBW felt so strongly it had done nothing wrong, it filed a declaratory judgment action in the Southern District of New York, requesting that the court agree, and then Summit predictably asserted counterclaims for trademark infringement, trade dress infringement, and dilution.

Three years later, after expensive and draining litigation, and after purchasing what it might have thought would be a get-out-of-jail-free-card from Coty, BBW still finds itself heading straight to a jury trial, with Summit Entertainment lusting after BBW’s profits on the highly successful Twilight Woods product line, so stay tuned.

Do you suppose that BBW is regretting pulling the trigger on a federal district court action now, especially in selecting the Southern District of New York?

Actually, let’s scroll a few frames earlier, do you suppose BBW is regretting the texting brainstorm session that resulted in the Twilight Woods name?

By the way, marketing types, how much creative is done via text messaging? Really, I’m wondering, as I was fascinated by that fact highlighted by the court.

Finally, any predictions on which party will be getting out their check book on this one? Do you suppose BBW will regret continuing to sell Twilight Woods products?