Thomas Pink v. Victoria’s Secret
Victoria’s Secret and high-end clothier Thomas Pink have been engaged in litigation in the UK concerning the rights to the trademark PINK when used in connection with clothing. Now Victoria’s Secret has filed a lawsuit against Thomas Pink in US Federal Court relating to the same dispute.
Thomas Pink was founded around 1984. Victoria’s Secret has been using the PINK mark since 2001. Victoria’s Secret holds twenty-one registrations involving the PINK mark with the US Patent and Trademark Office; Thomas Pink has three such registrations.
Given more than a decade of peaceful coexistence, why did this litigation suddenly arise? One commentator notes that Victoria’s Secret opened its first UK stores in 2012. Presumably that was too much for Thomas Pink.
Victoria’s Secret filed their US lawsuit in order to seek a declaratory judgment from the court that their use of the marks “…is not intended or likely to cause confusion, mistake, or deception as between the source, association, or affiliation of the Parties’ respective products, service or businesses…and does not jeopardize the goodwill, if any, symbolized by Thomas Pink’s registered trademarks, nor does it cause any other injury to Defendants…”
This is essentially the flip side of a typical trademark infringement lawsuit – asking the court to declare that you are not infringing on the other side’s trademark.
Could Thomas Pink have successfully sued Victoria’s Secret for trademark infringement in the US? As I noted in a previous blog post about a dispute between Kraft Foods and Cracker Barrel Old Country Store (a slightly less fashionable dispute, I’ll admit):
The legal theory of laches may apply here – a defense which requires the defending party to prove that:
- the plaintiff unreasonably delayed in enforcing its rights; and
- the delay caused prejudice to the defendant.
By failing to assert a trademark claim for over a decade, Thomas Pink may have lost the opportunity to enforce its rights (whatever those may be) against Victoria’s Secret. Nonetheless, Victoria’s Secret clearly wants to make extra sure that it doesn’t jeopardize its rights in its valuable PINK marks.
