IP Law Daily, TRADEMARK NEWS: Victoria’s Secret Accuses Makeup Company of Attempting to Monopolize “Naked”, (Aug 9, 2012)

By Peter Reap, J.D., LLM.

Victoria’s Secret Stores Brand Management, Inc. (“VS”) filed suit last week in the federal district court in Columbus, Ohio, against makeup manufacturer Urban Decay Cosmetics, LLC, accusing it of attempting to monopolize the term “Naked” in connection with cosmetic products.

VS seeks a declaratory judgment that its use of “THE NAKEDS,” “THE NAKEDS BY VICTORIA’S SECRET,” and related marks in connection with the marketing and sale of VS personal care products, including makeup, is not likely to cause consumer confusion as to the source or affiliation of the parties’ respective products.

VS alleges that, as early as March 30, 2010, it has used the trademark “THE NAKEDS BY VICTORIA’S SECRET” and is the owner of U.S. Federal Trademark Registration No. 3,877,068 for that mark in connection with bras and panties. Since at least as early as June 2012, VS has used the related mark “THE NAKEDS” in connection with cosmetics, specifically makeup.

On July 18, 2012, Urban Decay’s counsel sent a letter to VS demanding, among other things, that VS “immediately cease all production, marketing, promotion, sale and distribution of the NAKEDS palette,” and deliver to Urban Decay for destruction all remaining inventory of products and promotional material.

The letter concluded with the following threat: “If we do not hear from you by July 27, 2012 … we will advise Urban Decay to pursue its legal options to protect and enforce its valuable intellectual property rights.”

Urban Decay sells makeup products using the terms “NAKED” and “NAKED2,” according to the complaint. Further, the term “Naked,” standing alone, has descriptive qualities when used in reference to personal care products, including makeup, and Urban Decay does not own any trademark registration for the term, standing alone. In addition, neither VS nor Urban Decay are aware of any actual confusion as to the source or affiliation of the parties’ products, VS asserts.

Specifically, VS alleges claims for declaratory judgment for non-infringement of trademark, for no unfair competition, for no false designation of origin, and for non-infringement of trade dress. VS requests that Urban Decay be permanently enjoined from instituting, prosecuting, or threatening any action against VS with respect to VS’s use of “THE NAKEDS,” “THE NAKEDS BY VICTORIA’S SECRET,” and related marks.

The complaint in Victoria’s Secret Stores Brand Management, Inc. v. Urban Decay Cosmetics, LLC was filed on July 31, 2012.

The case is Civil Action No. 2:12-cv-00693.

Gerald P. Ferguson (Vorys Sater Seymour & Pease, LLP) for Victoria’s Secret Stores Brand Management, Inc.

News: Trademark OhioNews