A & H SPORTSWEAR, INC;  MAINSTREAM SWIMSUITS, INC., APPELLANTS,

V.

VICTORIA'S SECRET STORES, INC.;  VICTORIA'S SECRET CATALOGUE, INC.

PRESENTED BY SANDHYA SOMVANSHI

898

A&H SPORTS WEAR INC. VICTORIA’S SECRET STORES INC.

• A&H is a Pennsylvania corporation and maker of 10% of nation’s swimsuits

• Trade Mark for its Miraclesuit was issued on October 27,1992.

• Its affiliate Mainstream Swimsuits, Inc., a Pennsylvania corporation served as exclusive distributer of MIRACLESUIT through its swim shaper division

• MIRACLESUIT marketed as Control suit as its patented fabric & design makes the wearer appear slimmer

• It retail around $54 to $100.

• Victoria’s Secret Stores ,Inc. (‘VS STORES’) & Victoria’s Secret Catalogue Inc.(VS Cata-logue),together (“VS”), a well known manufa-cturer Of “lingerie” , is a Delaware corp. Having HQ in New York city

• It operates over 650 stores through out theCountry focuses on intimate apparel, with bra Sales the leading product

• It is a mail order business with wide array Merchandising sold through its 300million Catalogue.

• It chose THE MIRACLE BRA name in 1992.

FACTS

• The name Miraclesuit was chosen Because it was unique, dynamic, exciting, And memorable

• Miraclesuit was also sold for brief –Time in VS catalogue in 1992& 1993, but Relationship was discontinued later on As VS catalogue failed to identify the Swimsuit by its Miraclesuit Trademark.• A&H did not initially objected to VS;Trade mark use of THE MIRACLE BRA, did So after VS began to extend THE MIRACLE BRA in to swimwear with its introduction As MIRACLE BRA bikini in november,1994

• In 1993 it introduced and first time used in each VS store.

• A registration issued for its Trade mark THE MIRACLE BRA on 9 august 1994

• First time appeared in VS catalogue in 1994

• THE MIRACLE BRA , which retails for $20 has been marketed and generated over $132 million in sales.

• In The August 1994 VS stores applied for registration THE MIRACLE BRA

trademark in swimwear & in November 1994, VS began to extend THE MIRACLE BRA In to swimwear with its introduction of THE MIRACLE BRA bikini, VS sales of swimwear expand rapidly.

• In feb,1995 the PTO refused the register -ation on the basis of A&H’s prior registration of THE MIRACLESUIT even though A&H had not imposed an objection to the Registration

• VS stores had not conducted any separate trademark search of the MIRACLE BRA trademark as it Applied for swim wear Collection because it had Been using THE MIRACLE BRA trademark in lingerie.

• In Dec 1994, after a month of the Introduction of THE MIRACLE BRA

Swimwear collection, A&H filed suit Alleging infringement of its trademark MIRACLESUIT

• Seeking preliminary injunction & Damages

DISTRICT COURT FINDINGS:

• Following a 2 week bench trial , District Court found no likelihood of confusion b/w THE MIRACLE BRA mark applied to lingerie and Miraclesuit mark.

• The Court entered judgement for Victoria’s Secret and against A&H on that claim of Infringement.

• The court found VS use of THE MIRACLE BRA on its lingerie created no likelihood of confusion with A&H Miraclesuit but for Victoria Secret’s use of THE MIRACLE BRA mark on swimwear District Court found possibility of confusion with A&H Miraclesuit swim wear & ordered Victoria Secret not to use THE MIRACLE BRA tag with swim wear unless accompanied by a disclaimer i.e. THE MIRACLE BRA ™ swimwear collection is exclusive to VS & not associated with Miraclesuit ® by swim shaper ®

• VS appealed from District court’s decision in favour of A&H w.r.t THE MIRACLE BRA for Swimwear

• District Court also ordered royalties on past and future sales of THE MIRACLE BRA swimsuits to be paid to A&H.

• When VS appealed from District Court decision in favour of A&H w.r.t THE MIRACLE BRA For swim wear , • A&H cross appealed.• To show VS violated LANHAM Act A&H has to show VS used confusingly similar mark

similarly for unfair competition claims also.• To prove it from Lanham Act violation:- the Plaintiff has to Demonstrate that it has Valid Mark

, he owns the mark, the defendend’s use of mark to identify goods or services causes likelihood of confusion , Plaintiff bears burden of proof

• District Court determined that VS’s use of THE MIRACLE BRA mark with lingerie did not create a likelihood of confusion with MIRACLESUIT.

• The test to determine the likelihood of confusion called as “Lapp factors” after Interpace corp. v. Lapp, Inc., 721 F.2d 460(3d Cir.1983). The District apply those factors and summarise its conclusion:

• Here A&H owns Miraclesuit which is valid & protectable & it was Concluded Lapp Test should be used to determine likelihood of confusion. As held in Fisons Horticulture, Inc v. Vigoro Indus., picture, as well as its weighing for plaintiff or defendant, must be done on an individual fact-specific basis.

Factors of Lapp Test

SIMILARITY OF MARK: “Whether the labels create same overall impression when viewed Separately. it is overall physical appearance of the Trade dress which is critical.

SIGHT,SOUND,MEANING OF THE MARKS and considered Effects of HOUSE MARKS & DISCLAIMER.

VS CONTENDED:

• MARKS: somewhat different• SOUND: Although MIRACLE is same but last syllable is different of both.

Miraclesuit: It bleeds 2 words together while THE MIRACLE BRA: Consist of 3 discrete words

• VISUAL: THE MIRACLE BRA : Presented in Either all capital block letters or in small capital letters with letters M & B alone in upper capital. Miraclesuit : accompanied by “look ten pounds lighter in 10 seconds”! Slogan and advertised with initial letter M capitalised & Rest in LOWER case titles in to italicized Script or M & S both capitalised

A&H CONTENDED:• Dominant portion of each mark is word “MIRACLE” deemed to be confusingly similar (Bra

& suit are generic word)

COURT HELD:• Court held that Sight & sound were distinct.

HOUSE MARKS & DISCLAIMER:

VS CONTENDED:• it has used its house mark as well as disclaimer with its product to render mark dissimilar as

disclaimer appeared in dark black colour typed against a light background at lower left corner of actual page on which THE MIRACLE BRA swimwear collection featured in catalogue just above the telephone number for placing an order.

A&H CONTENDED: • Disclaimer can’t be considered when determining the likelihood of Confusion• PTO attorney rejected VS application to register the MIRACLE BRA for swimsuits, bathing

suits & bikini on the ground of likelihood of confusion b/w its mark & Miraclesuit.

COURT HELD:• There is no factual error in considering disclaimer & it helped in dispelling the potential

consumer confusion • District court gave no weight to PTO decision in its most recent opinion as PTO did not had

benefit of complete record Before the district court and PTO decision was Conclusionary, not searching or analytical.• Court stated overall impression created by mark should be central focus.

STRENGTH OF THE MARK: DISTINCTIVENESS OR CONCEPTUAL STRENGTH: For Lanham Act protection mark should be either Suggestive, Arbitrary, Or fanciful or must be descriptive . Generic name mark receive non-protection as they are not TM at all. Stronger marks receive stronger Protection. COURT HELD: “Miraclesuit” ranges from suggestive to arbitrary because it requires consumer imagination to determine its meaning. Word miracle did not reveal anything about the product so mark should receive highest level of protection

It should receive highest level of protection thus dismissing VS efforts to draw Miraclesuit mark is conceptually weaker because Miracle is used by several other companies.

COMMERCIAL STRENGTH OR MARKET PLACE RECOGNITION A&H has contended Mark has high level of Commercial Strength as A&H spend so much on advertising & their efforts resulted in increased economic recognition.

COURT HELD: District court did not so find and not believed that such a finding was mandated by evidence in swimwear v. lingerie.

PRODUCT SIMILARITY : Miraclesuit: Design & advertise to make figure appear slimmer.

THE MIRACLE BRA: It is designed & advertised to enhance cleavage COURT HELD: whether the goods were so related that a consumer would reasonably assume they were offered by the same source, thereby leading to confusion. District court found that the consuming public would not expect A&H to manufacture products in the lingerie market

MARKETTING &ADVERTISING CHANNEL: COURT HELD Channels of Sale & Advertisement are overlapping and means of sale are similar. Miraclesuit - advertised in store promotion, magazines, department, store building MIRACLE BRA -In Victoria’s Secret Stores, TV adv., even though MIRACLE BRA suits were never sold outside the VS store . This is a fine distinction between channels in which products are sold in favour of decreasing likelihood of confusion.

COURT HELD: Channel of advertisement in favour of A&H.

SOPHISTICATION OF CONSUMERS: The price of the goods and other factors indicate the care & attention expected for the purchaser during purchasing & price of the goods.• A&H failed to show that his consumers are not sophisticated one’s.

COURT HELD:The court relied on the fact that buyers of women apparel are sophisticated one’s so in conclusion court said consumers will be discriminating in their selection of swimwear, whether one-piece or bikini so District Court gave judgement in favour of V.S

INTENT OF DEFENDANT:

COURT HELD District court found VS had not intended to confuse customer when it began using THE MIRACLE BRA in conjunction with its swimwear because of its success in lingerie as no one at VS store knew about Miraclesuit as due to lack of communication was result of bureaucratic carelessness & was not intentionally done by profiting of plaintiffs Miraclesuit mark. So Court decided Intent factor in favour of VS mark

ACTUAL CONFUSION: Court held there is no sufficient credible evidence of actual confusion.

PRICE : COURT HELD

THE MIRACLE BRA(under $ 20) & Miraclesuit(over $ 50) different prices so it diminishes any likelihood of confusion court decided in favour of VS.

FACTOR SUMMARY: There is certainly similarity between the marks at issue, but that similarity was discounted By District Court because the marks were not identical in their entirety. In sum District Court weighted each factor as required. After reviewing the record and the parties argument, Court concluded there was no likelihood of confusion between THE MIRACLE BRA mark applied to lingerie and the Miraclesuit mark, and hence no infringement.

CONCLUSION:Appellate court held that they affirm the judgement of District Court in favour of VS On A&H claim arising out of THE MIRACLE BRA with lingerie.