Monday, January 08, 2007

Pleading dilution

Counterfeit Chic provides a copy of the complaint in Victoria's Secret v. Nines USA, which includes pictures of the panties that allegedly infringe and dilute VS's copyrighted/trademarked pink dog design. Notably, VS pleads only New York state dilution, which is probably the wisest strategy for plaintiffs who don't want to be sucked into a debate about famousness under federal law. It will be interesting to see how other elements of a state-law dilution claim are affected, or not, by the new federal definitions.

My take: a strong case for the plaintiff, but one that raises interesting questions of "use as a mark." The dogs are used as repeating designs on the panties; often, that type of use would be decorative rather than trademark use. Because we're familiar with VS's mark, the dogs serve as an indicator of source -- but are there any cases in which a similar dog outline could be used decoratively on clothing and not count as trademark use?

1 comment:

Anonymous said...

The Black Dog Tavern recently won an opposition at the TTAB, based on its dog design. TTABlog posting here:

Of course, that doesn't answer the ornamentality question that Professor Tushnet poses, because the TTAB decision obviously involved a "defendant" who was trying to register a dog design as a trademark.

John L. Welch