A&H Sportswear, Inc. v. Victoria’s Secret Stores, Inc.

United States Court of Appeals for the Third Circuit, 2000

237 F.3d 198

Trademark Infringement Issues:

Background:A&H Sportswear, Inc. (Plaintiff) brought a trademark infringement action against Victoria’s Secret Stores, Inc. (Defendant) concerning the use of the “Miracle Bra” mark. Plaintiff marketed swimwear under the “Miraclesuit” mark and alleged that Defendant’s use of “The Miracle Bra” for its swimwear caused consumer confusion and infringed on its trademark rights.

Key Legal Issues:

1. Validity and Ownership of the Trademark:

   • Plaintiff needed to establish that “Miraclesuit” was a valid, protectable trademark and that it owned the rights to the mark. This was done through the trademark registration of MIRACLESUIT (several registrations at the United States Patent and Trademark Office).
   • The court found that “Miraclesuit” was a valid, legally protectable trademark.

2. Likelihood of Confusion:

   • The central issue was whether Defendant’s use of “The Miracle Bra” mark for swimwear was likely to cause confusion among consumers regarding the source of the products.

Court’s Analysis:

1. Strength of the Plaintiff’s Mark:

   • The court determined that “Miraclesuit” was suggestive and inherently distinctive, providing it with a higher degree of protection.

2. Similarity of the Marks:

   • The court found that “Miraclesuit” and “The Miracle Bra” were similar in that they shared the “Miracle” element, which could lead to confusion, especially since both were used in the context of swimwear.

3. Proximity of the Products:

   • Both Plaintiff and Defendant sold similar products (swimwear), which increased the potential for consumer confusion.

4. Evidence of Actual Confusion:

   • The court examined evidence of actual consumer confusion. However, the evidence presented by Plaintiff was limited and not highly persuasive.

5. Defendant’s Intent:

   • There was no significant evidence suggesting that Defendant intended to create confusion or capitalize on Plaintiff’s established reputation.

6. Marketing Channels and Target Audience:

   • Both parties used similar marketing channels and targeted similar consumer demographics, which heightened the risk of confusion.

7. Consumer Sophistication:

   • The court noted that the consumers of swimwear were moderately sophisticated, which could potentially reduce the likelihood of confusion but was not decisive.

8. Defendant’s Use of “Miracle” in Other Products:

   • Defendant’s extensive use of the “Miracle” element in other product lines (e.g., bras) contributed to the distinctiveness of its brand and somewhat diminished the likelihood of confusion with Plaintiff’s swimwear.

Court’s Decision:The court ultimately concluded that despite some similarities and overlapping marketing channels, the Plaintiff failed to demonstrate a significant likelihood of confusion among consumers. The court ruled in favor of Victoria’s Secret Stores, Inc., holding that there was no trademark infringement.

Key Takeaways:

• A suggestive and inherently distinctive mark receives strong protection, but the likelihood of confusion must still be clearly demonstrated.
• Similarity in marks, product proximity, and marketing channels are critical factors in assessing consumer confusion.
• Evidence of actual confusion and intent to deceive are important but must be substantial and persuasive to succeed in a trademark infringement claim.

1-800 Contacts, Inc. v. WhenU.com, Inc.

United States Court of Appeals for the Second Circuit, 2005

414 F.3d 400

Trademark Infringement Issues:

Background:1-800 Contacts, Inc. (Plaintiff), a retailer of contact lenses, sued WhenU.com, Inc. (Defendant), an online advertising company, alleging trademark infringement. The Plaintiff argued that Defendant’s practice of displaying pop-up advertisements for competitors’ websites when users visited Plaintiff’s website constituted unauthorized use of its trademark.

Key Legal Issues:

1. Use in Commerce:
   • The central issue was whether WhenU’s practice of displaying pop-up ads constituted a “use in commerce” of the Plaintiff’s trademark under the Lanham Act.

Court’s Analysis:

1. Definition of “Use”:

   • The court examined the definition of “use” under the Lanham Act, which generally involves the display of a trademark on goods, containers, displays, or documents associated with the sale of goods or services.

2. WhenU’s Practices:

   • WhenU created software that would trigger pop-up ads based on the URLs and keywords users entered into their browsers. However, WhenU did not display the Plaintiff’s trademark in the text of the pop-up ads themselves.
   • WhenU’s software operated by identifying the Plaintiff’s website URL but did not reproduce or display the Plaintiff’s trademark in the ads shown to users.

3. No Display of Trademark:

   • The court determined that WhenU’s use of the Plaintiff’s URL to trigger pop-up ads did not constitute a “use in commerce” of the trademark because the trademark itself was not displayed or used to promote the goods or services.

4. Likely Confusion:

   • Because the court found that WhenU’s actions did not constitute “use in commerce,” it did not need to extensively analyze the likelihood of confusion.
   • However, the court noted that consumers were unlikely to be confused about the source of the pop-up ads since they were clearly separate from the Plaintiff’s website and identified different entities.

Court’s Decision:The court ruled in favor of WhenU.com, Inc., finding that its practice of using URLs to trigger pop-up advertisements did not constitute trademark infringement because there was no “use in commerce” of the Plaintiff’s trademark under the Lanham Act.

Key Takeaways:

• “Use in commerce” under the Lanham Act requires the display of the trademark on goods, containers, displays, or documents associated with the sale of goods or services.
• Merely triggering advertisements based on URLs or keywords without displaying the trademark does not constitute “use in commerce.”
• The likelihood of consumer confusion is not a central issue if the threshold requirement of “use in commerce” is not met.

Recovering Attorney Fees

15 U.S. Code § 1117 is the statute which discusses recovery for violating a trademark. Under 15 U.S. Code § 1117(a), the statute deals with the recovery of attorney fees. The statute reads, “The court in exceptional cases may award reasonable attorney fees to the prevailing party.”

In Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014),  the Supreme Court added clarity to what an “exceptional case” is. The Octane Court defined an “exceptional case” as one that stands out due to either 1 of 2 things:

1. the strength of a party’s litigating position
   1. for this prong, courts should look at the facts of the case and the law which governs the issue
2. the unreasonable manner in which the case was litigated
   1. To determine whether a case is ‘exceptional,’ lower courts should look at the totality of the circumstances on a case-by-case basis