Cease and Desist - Willful Infringement 02.

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"The only thing necessary for the triumph of evil is for good men to do nothing"
Edmund Burke

The following is an excerpt from the court opinion in the case of Desert Beauty v Mara Fox, in which the whackjob Mara Fox had sent Desert Beauty a cease and desist letter concerning the use of the term "Love Potion" for which Mara Fox had a registered trademark.
Desert Beauty declined to stop using the term and Mara Fox claimed that such failure to stop using the term was proof of willful trademark infringement. Desert beauty used "love potion" in conunction with its business name which lessened the chance of confusion. The district court refused to accept the allegation of willful infringement. From page 19 of the opinion:

Fox also points to DBI's alleged failure to discontinue the sale of products with the words "love potion" after she provided notice of the alleged trademark infringement. But the "failure to completely abandon the use after receiving a cease and desist letter is insufficient to support an allegation of bad faith" as a matter of law. Something Old, 1999 WL 1125063, at *7; see also Wonder Labs, Inc. v. Procter & Gamble Co., 728 F. Supp. 1058, 1064 (S.D.N.Y. 1990) (failure to abort advertising campaign upon receipt of cease and desist letter "is absolutely no proof that the defendant acted in bad faith to capitalize on the plaintiff's trademark"). Notice of Fox's trademark rights -- either by her trademark registration or the cease and desist letters -- "does not preclude use of the words contained in [Fox's] registered mark in their primary[, descriptive] sense," Wonder Labs, 728 F. Supp. at 1064, especially where DBI believed that its use was descriptive, see Something Old, 1999 WL 1125063, at *7. Indeed, the numerous letters exchanged between the parties indicate that DBI had maintained the position that its use of "love potion" was fair use. (See, e.g., 4/23/04 Letter ("our client's use of the term 'love potion' is fair use"); 5/24/04 Letter (same)).6 In its June 4, 2004 letter to Fox, DBI "for business reasons, [agreed] to cease and desist from the use of the term 'love potion,'" but nevertheless maintained that its "use of 'love potion' in phrases like 'deliciously kissable love potion fragrance' [was] merely descr[i]ptive." (6/4/04 Letter). These letters show that DBI believed that its use of "love potion" was descriptive.
On the record before the Court, no reasonable jury could find bad faith; to the contrary, a reasonable jury could only conclude that DBI acted in good faith. An indication of good faith is "the display of defendant's own name or trademark in conjunction with the mark it allegedly infringes." EMI Catalogue, 228 F.3d at 67, citing Cosmetically Sealed, 125 F.3d at 30. This is so because the use of a distinct trademark minimizes any likelihood of confusion as to the source or sponsorship of a product. See W.W.W. Pharmaceutical Co., Inc. v. Gillette Co., 984 F.2d 567, 573 (2d Cir. 1993) ("Where a similar mark is used in conjunction with a company name, the likelihood of confusion may be lessened."). As discussed above, all DBI products had the DESSERT trademark and indicia, reflecting DBI's efforts to differentiate its products in the marketplace rather than to trade on Fox's, or any other seller's, good will.
Furthermore, in light of "the overall context in which the marks appear and the totality of factors that could cause consumer confusion," EMI Catalogue, 228 F.3d at 66-67, the dissimilarities between the products are patently obvious as to dispel any inference that DBI was trying to pass its products as one of Fox's Love Potion Perfumes or to confuse consumers as to source or sponsorship. The only similarity is the term "love potion," which alone is insufficient to establish a likelihood of confusion. See Clairol, Inc. v. Cosmair, Inc., 592 F. Supp. 811, 815 (S.D.N.Y. 1984) ("the mere fact that two marks may share words in common is not determinative" in assessing likelihood of confusion).

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