Shirt v Skins – Victoria’s Secrets’ Color War

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“Pink, it’s my new obsession” sang Steve Tyler and also it seems it is for Victoria’s Secret. So blinded is Lesley Wexner’s VS with desire to own the mark “Pink” that they have forgotten the spanking Thomas Pink doled out last year in Ohio.

This battle has genuinely conflicted me, as a British lawyer, working in the States with a number of clients in the lingerie and intimate apparel marketplace.  Putting on my first Thomas Pink shirt bought on Chancery Lane all those years ago was a religious experience, so too was taking off a Victoria’s Secret bra for the first time. Also Victoria’s Secret in this case is the brash, garish Goliath (sales of $6.12 billion in 2012) trying to stamp on the a hot under the collar David (a mere £33.87 million profit last year). Who doesn’t love a plucky British underdog?

On a legal level, I regularly make the argument that just because a company has the right to use a name in one class does not necessarily mean that it have a right to preclude others in an unrelated retail channel. However, as both companies sell apparel, what’s really got Wexner’s knickers in a twist?

Over the past couple of years Victoria’s Secret aggressively expanded into the UK with a flagship on Bond Street and another stores which were selling VS’ “Pink” product line. Shattering the claimed entente cordiale, last May Thomas Pink sued Victoria’s Secret in England, claiming infringement (Pink does sell apparel for women and underwear for men) and obtained European-wide injunctive relief enjoining VS’ Pink in Europe.

Looking for home court advantage, Victoria’s Secret sued back in federal court in Columbus seeking a declaration that VS is not infringing. The case was dismissed and the British company’s empirical reach opposed VS applications to register pink trademarks in Europe and countries ranging from Argentina across to South Korea.

In the new lawsuit VS explains it real fear that it is “at risk of being sued on the same grounds” in the US and might lose all of its rights domestically.  This could occur despite the fact that VS has been using “Pink” since 2001 and “pink is life,” “pink nation” and “forever pink” are amongst its registered marks.

In its filing, Victoria’s Secret states that, as far as it is aware, the use of the “Pink” name “has never caused an instance of consumer confusion as to the source or affiliation of any of its products or services.”

In deciding this matter maybe the Ohio Court will take judicial notice of that well known Aerosmith maxim “Pink it’s the color of passion, ‘Cause today it just goes with the fashion.”

Robert Garson

rg@gs2law.com