Menashe v. V Secret Catalogue, Inc.
409 F. Supp. 2d 412 (2006)
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Rule of Law:
A party that establishes bona fide use of an inherently distinctive trademark in commerce has priority rights over a subsequent party who files an Intent-to-Use (ITU) application for the same or a confusingly similar mark.
Facts:
- In June 2004, Ronit Menashe and Audrey Quock began a joint business venture to produce a line of women's underwear.
- Sometime between March and June 2004, Victoria's Secret's marketing department decided on the name 'SEXY LITTLE THINGS' for a new panty collection.
- On or around July 28, 2004, Victoria's Secret launched its 'SEXY LITTLE THINGS' collection in four stores, displaying the mark on hangtags, store signage, and permanent fixtures.
- On August 31, 2004, Quock registered the domain name www.sexylittlethings.com.
- Between September 4 and September 9, 2004, Victoria's Secret mailed a catalogue featuring the 'SEXY LITTLE THINGS' collection to approximately 2.9 million consumers.
- On September 13, 2004, after searching the USPTO database, Menashe and Quock filed an Intent-to-Use (ITU) application for 'SEXY LITTLE THING, SEXY LITTLE THINGS' for lingerie.
- On November 15, 2004, Victoria's Secret's outside counsel sent a cease and desist letter to Menashe and Quock, asserting prior rights to the 'SEXY LITTLE THINGS' mark.
- Upon receiving the letter, Menashe and Quock halted production, publicity efforts, and website development for their underwear line.
Procedural Posture:
- Ronit Menashe and Audrey Quock (Plaintiffs) filed a declaratory judgment action against Victoria's Secret in the U.S. District Court for the Southern District of New York.
- Plaintiffs sought a declaration of non-infringement of the trademark 'SEXY LITTLE THINGS'.
- Victoria's Secret filed a motion to dismiss the complaint for lack of subject matter jurisdiction and failure to state a claim, or in the alternative for summary judgment.
- The district court denied Victoria's Secret's motion.
- A bench trial was held before the district court judge.
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Issue:
Does a party who makes bona fide use of a suggestive trademark in commerce prior to another party's filing of an Intent-to-Use (ITU) application for a nearly identical mark have priority rights to that mark?
Opinions:
Majority - Baer, District Judge.
Yes. A party who establishes first bona fide use of an inherently distinctive mark in commerce has priority over a subsequent filer of an Intent-to-Use application. The court first determined that the mark 'SEXY LITTLE THINGS' is suggestive, not descriptive, because it requires imagination to connect the mark to the product; it evokes the popular phrase for an attractive woman, rather than merely describing the qualities of lingerie. As a suggestive mark, it is inherently distinctive and protectable without proof of secondary meaning. The court then found that Victoria's Secret established bona fide 'use in commerce' under the Lanham Act beginning on July 28, 2004, which predates the Plaintiffs' ITU filing on September 13, 2004. This use was established through prominent in-store displays, hangtags, and signage, as well as 'point of sale' displays in catalogues and on its website. Because Victoria's Secret was the first to make bona fide use of the mark in commerce, it acquired priority rights, and the Plaintiffs are not entitled to a declaratory judgment of non-infringement.
Analysis:
This case clarifies the priority dispute between a party claiming rights based on actual use and another claiming rights based on an Intent-to-Use (ITU) application. It reinforces the fundamental trademark principle that rights in the United States are acquired through use, not registration. The decision demonstrates that an ITU filing provides a constructive use date, but this date cannot defeat the superior rights of a senior user who has already established bona fide use in commerce. Furthermore, the court provides a useful analysis of what constitutes 'use in commerce,' affirming that point-of-sale displays like catalogues and extensive in-store signage are sufficient to establish trademark use, even before labels are sewn into the garments themselves.
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