Lingerie and beauty products company Victoria's Secret asked an Ohio federal judge to rule that it can co-exist with luxury clothing retailer Thomas Pink.
In Victoria's Secret Stores Brand Management Inc. v. Thomas Pink Ltd., the company seeks a declaratory judgment that the Victoria's Secret Pink brand doesn't infringe Thomas Pink's trademarks. The action cited Thomas Pink's trademark case against Victoria's Secret UK Ltd., filed in the United Kingdom in May.
The Southern District of Ohio case, filed on July 24, claims that Thomas Pink has been aware of the Victoria's Secret Pink marks since at least August 2005.
"Victoria's Secret relied on Defendants' silence and inaction in using, promoting and registering its growing family of Victoria's Secret Pink Marks and trade names," the company argued.
Victoria's Secret asked the court to rule that it isn't engaging in unfair competition under federal or Ohio law and that using its own marks doesn't qualify as a false designation of origin.
Victoria's Secret's lawyers at Squire Sanders referred questions to the company. In an email, parent company Limited Brands Inc. said, "We do not have a comment to provide."
Thomas Pink does not yet have lawyers in the U.S. case. "Thomas Pink is determined to protect the considerable investment that has been made into building the world's leading luxury shirt brand. No further comment will be made beyond this statement as this is now a legal matter," spokesman Alex Field said by email.
Whether Thomas Pink can coexist with Victoria's Secret Pink in the United Kingdom requires a different analysis than whether that's possible in the United States, said Marty Schwimmer, a partner at Leason Ellis in White Plains, N.Y., whose practice includes trademark law. Schwimmer isn't involved in the case.
He noted that Victoria's Secret has filed a host of U.S. trademark registrations for "Pink" since 2001 and that the companies' stores co-exist. "It seems that Thomas Pink would have an uphill battle to successfully bring an infringement suit in the U.S. against Victoria's Secret," he said.
He went on to call the declaratory judgment action a potentially good strategy for Victoria's Secret. "Victoria's Secret may get some holdings or admissions [by Thomas Pink] that it may try to enter in the U.K. action."
Sheri Qualters can be contacted at email@example.com.