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Source: http://www.lawupdates.com/summary/love_potion_dispute_ny_court_finds_dessert_beautys_product_line_did_not_inf/ January 3, 2009

August 11, 2008 "Love Potion" Dispute: NY Court Finds Dessert Beauty's Product Line Did Not Infringe Fox's Perfume Mark Dessert Beauty, Inc. v. Fox No. 05 Civ. 3872(DC), United States District Court for the Southern District of New York, 7/31/2008 Holding: In a trademark dispute over the term "love potion," the U.S. District Court for the Southern District of New York ruled that Dessert Beauty, Inc. ("DBI") did not infringe Maria Fox's trademark for perfumed essential oils. The district court specifically found that DBI's use of the term constituted fair use, giving three reasons for such conclusion. First, DBI had used the words "love potion" not to describe the source of the product but as a product name in a generic, descriptive sense. Second, DBI had used the words in a descriptive sense, given that the term "love potion" is a common term in the English language. And third, the evidence only showed DBI's good faith, based on the finding that 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. Because the district court found no material issue warranting trial with respect to the fair use defense, it granted DBI's motion for summary judgment on the trademark claims. Detailed Summary: The dispute in this litigation involved two words: “love potion.” Defendant and third-party plaintiff Mara Fox registered the trademark LOVE POTION for perfumed essential oils in 1995 and filed a declaration of incontestability for the LOVE POTION mark in 2001. In 2004, plaintiff DBI launched a line of beauty products that included two fragrance products described as “love potion fragrance” and “belly button love potion fragrance.” At issue was whether DBI’s use of the words “love potion” infringed Fox’s LOVE POTION trademark, or whether the use was fair use, immune from liability. Opinion, p. 1. In this case, DBI sought a declaratory judgment that, among others. it did not violate Fox’s trademark, or that its use of the term “love potion” was fair use. In resolving this issue, the district court held that to avail itself of the fair use defense, DBI must have made use of Fox’s LOVE POTION mark “(1) other than as a mark, (2) in a descriptive sense, and (3) in good faith.” Id., citing EMI Catalogue P’ship v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 64 (2d Cir. 2000). The district court found that each of these three elements weighed in favor of DBI. Specifically, under the first element, the district court found that DBI did not use “love potion” as a trademark because the source of its fragrance products was not identified by that term. Id., p. 11. Instead, the source was indicated by its own trademark DESSERT in conjunction with the lip stain logo and catch phrase “Sexy Girls Have Dessert,” which were prominently displayed on all DBI products. Moreover, DBI placed a TM symbol only next to the word “Dessert,” highlighting the non-trademark use of “love potion.” The TM symbol was not placed next to the words “love potion.” Hence, because DBI used the words “love potion” not to describe the source of the product but as a product name in a generic, descriptive sense, the use was not trademark use. Id., p. 12. With respect to the second element of fair use, descriptive use, the district court also found that it weighed in favor of DBI for three reasons. First, the words, by themselves, are descriptive. The words “love potion” do not describe an actual quality of DBI’s fragrance products . They are used to describe the effects that the products may have on whoever “kisses” or “tastes” the products worn by the wearer, or at least to describe the purpose with which consumers will use the product. Id., p. 15. Second, the term “love potion” is a common term in the English language. The very fact that “love potion” is defined in several dictionaries as a product used for the purpose of attracting the opposite sex reflects the ordinary usage of the term to describe products used for those purposes. Id. The third reason why the district court found that DBI’s use of the disputed term constituted descriptive use was that many merchants received warning letters from Fox for using “love potion” demonstrates that there is no other reasonably available word to describe the meaning captured by the term “love potion,” namely, that the opposite sex will be attracted to the wearer of the product. Id. Lastly, with respect to the third element of fair use, good faith, the district court also found in favor of DBI . 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. The only similarity is the term “love potion,” which alone is insufficient to establish a likelihood of confusion. Id., p. 20, referring to Clairol, Inc. v. Cosmair, Inc., 592 F. Supp. 811, 815 (S.D.N.Y. 1984). In short, no reasonable jury could conclude that plaintiff acted in bad faith to capitalize on Fox’s trademark. Indeed, the evidence only shows DBI’s good faith. Because the district court found no material issue warranting trial with respect to the fair use defense, it granted DBI’s motion for summary judgment on the trademark claims. Id., p. 21. © 2009 LawUpdates.com, LLC. All Rights Reserved. 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