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?
The Black Dog Tavern recently won an opposition at the TTAB, based on its dog design. TTABlog posting here:
ReplyDeletehttp://thettablog.blogspot.com/2006/11/black-dog-tavern-triumphs-in-ttab-2d.html
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