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Dessert Beauty, Inc. v. Fox

District Court, S.D. New York
568 F.Supp.2d 416 (2008)
ELI5:

Rule of Law:

The use of another's trademark is permissible under the fair use doctrine if the term is used (1) otherwise than as a mark, (2) in a descriptive sense to describe the goods or their effects, and (3) in good faith without intent to cause consumer confusion as to the source.


Facts:

  • In 1990, Mara Fox created a fragrance called 'Love Potion Perfume' and, in 1995, registered 'LOVE POTION' as a trademark for perfumed essential oils.
  • In 2001, Fox filed a declaration of incontestability for the LOVE POTION trademark.
  • In 2004, Dessert Beauty, Inc. (DBI), a company endorsed by celebrity Jessica Simpson, launched a line of beauty products under its own prominent 'DESSERT' trademark.
  • DBI's product line included items named 'love potion fragrance' and 'belly button love potion fragrance,' which were described in packaging with phrases like 'deliciously kissable love potion fragrance.'
  • All of DBI's packaging and advertising materials prominently featured the DESSERT trademark, a distinctive logo, and a catchphrase, with the trademark symbol 'TM' appearing next to 'Dessert' but not 'love potion'.
  • Upon learning of DBI's products in April 2004, Fox's lawyer sent cease and desist letters to DBI and its retailer, Sephora.
  • DBI voluntarily agreed to stop using the term 'love potion' for business reasons but consistently maintained that its use was merely descriptive and thus constituted fair use.
  • Fox also initiated a public campaign against DBI, including messages on her website and issuing a press release accusing the company of trademark infringement.

Procedural Posture:

  • Dessert Beauty, Inc. (DBI) filed a lawsuit against Mara Fox in federal district court, seeking a declaratory judgment that it did not infringe Fox's trademark.
  • Fox asserted counterclaims against DBI and filed a third-party complaint against retailer Sephora, Inc. for trademark infringement under federal and state law.
  • DBI and Sephora previously moved for summary judgment, which the court denied in part, allowing Fox's trademark infringement claims to proceed.
  • The parties subsequently filed cross-motions for summary judgment, with DBI arguing its use was fair use and Fox seeking dismissal of DBI's entire complaint.

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Issue:

Does a company's use of the trademarked phrase 'love potion' on its fragrance products constitute fair use under the Lanham Act when the phrase is used to describe a purported effect of the product and the company's own trademark is prominently displayed?


Opinions:

Majority - Chin, District Judge

Yes, DBI's use of 'love potion' constitutes fair use under the Lanham Act. The court applied a three-part test for fair use and found that DBI satisfied all elements. First, DBI's use was 'other than as a mark' because the source of its products was clearly identified by its own prominent DESSERT trademark and logo, while 'love potion' was used as a product descriptor within the brand's line. Second, the use was 'in a descriptive sense,' not to describe a literal ingredient, but to describe the product's intended purpose or effect—to make the wearer more attractive—which is permissible under Second Circuit precedent. The court noted 'love potion' is a common term with no other reasonable verbal equivalent. Third, DBI acted in 'good faith' and did not intend to trade on Fox's goodwill. The prominent use of DBI's own brand, coupled with the significant differences in packaging, font, and overall product presentation, negated any likelihood of consumer confusion as to the source. The court concluded that failure to conduct a trademark search or immediately cease all use upon receiving a demand letter does not, by itself, constitute bad faith.



Analysis:

This decision provides a clear application of the classic fair use defense in trademark law, reinforcing that a party can use a descriptive term, even if trademarked, as long as it is not used as a source-identifier. The ruling underscores the importance of prominently displaying one's own trademark to negate claims of infringement and bad faith. It also broadens the concept of 'descriptive use' to include not just a product's physical characteristics but also its intended purpose or the effect it purports to have on consumers, which offers greater flexibility for marketing language in future cases.

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