A designer of footwear for young women under the mark DELICIOUS could pursue trademark infringement claims against intimate apparel retailer Victoria's Secret in connection with a promotion in which Victoria's Secret sold or gave away a hot pink tank top with the word "Delicious" written across the chest in a silver typescript, the U.S. Court of Appeals in San Francisco has held. The promotion was for Victoria's Secret's line of personal care products sold under the mark BEAUTY RUSH.

The federal district court in Pasadena erred by granting Victoria's Secret's motion for summary judgment, the appellate court said. The district court had determined that the likelihood of confusion factors weighed in favor of Victoria's Secret and that the designer's claims were "entirely barred by the fair use defense."

Likelihood of Confusion

Genuine issues of material fact precluded summary judgment as to whether consumers were likely to be confused as to the source of Victoria's Secret's tank top, the appellate court said. A jury could reasonably conclude that the majority of Sleekcraft factors favored the footwear designer.

The court noted that there were differences in the marks' font, color, and size, and that Victoria's Secret only distributed its tank top in its retail stores and in packaging bearing the BEAUTY RUSH marks. However, it was plausible that consumers in a post-purchase context could see the tank top and be confused as to who produced it.

There was evidence that DELICIOUS was suggestive, when used in connection with footwear, rather than descriptive. The designer's sales success for its DELICIOUS-brand shoes was sufficient to make the commercial strength of the mark a jury question.

A reasonable jury could find that the parties' goods were related, the appellate court said. There was evidence that the consuming public perceived that women's shoes and apparel were complementary.

The district court erred by excluding a survey showing evidence of actual confusion. The survey had been conducted in accordance with accepted principles, according to the appellate court. The survey determined that 46 percent of respondents believed that DELICIOUS shoes and the "Delicious" tank top came from the same company.

Factual issues also existed with regard to purchaser sophistication, the similarity of the parties' marketing channels, the likelihood of expansion, and Victoria's Secret's intent.

Fair Use

With regard to the fair use defense, a reasonable jury could determine that Victoria's Secret used "Delicious" as a trademark, rather than in a merely descriptive sense. The mark was used in a similar manner to other Victoria's Secret marks.

Victoria's Secret contended that the word was used to describe the flavorful attributes of its lip gloss and other cosmetic products in the BEAUTY RUSH line. There was evidence, however, that Victoria's Secret intended for the word to serve as a "playful self-descriptor," as if the wearer of the tank top was saying, "I'm delicious." Victoria's Secret had at its disposal a number of alternative words that could have achieved this goal. Victoria's Secret's failure to investigate whether someone held a DELICIOUS trademark could support a jury finding that Victoria's Secret's carelessness in its use of the word "Delicious" rendered its use of the word objectively unfair, in the court's view.

Fortune Dynamic, Inc., 9th Cir., ¶61,679.