Schroder Brooks Law Firm, PLC
CREATIVE LAWYERS FOR THE CREATIVE COMMUNITY

Joni's Blog

US Fashion Blawg

You Never Forget Your First Love!

“You Never Forget Your First Love”  

At least that seems to be the message Victoria’s Secret is conveying to its competitor, a small start-up lingerie company named ThirdLove. ThirdLove seems to have it’s panties in a wad so to speak over the applications filed by Victoria’s Secret for the trademark phrase “Victoria’s Secret First Love” and a venomous statement made by Victoria’s Secret referring to ThirdLove’s brand.  Victoria’s Secret has two applications pending for its “First Love” mark.  The application that was filed in a class that included beauty products, lotions and creams went to publication unopposed, however the second application in the clothing class has been issued an initial refusal based on likelihood of confusion.

 The spat started during fashion week when Ed Razek, chief marketing officer of Victoria’s Secret’s parent company was reported stating “We’re nobody’s third love. We’re their first love. And Victoria’s Secret has been women’s first love from the beginning.” The feud continued when ThirdLove cofounder and chief executive officer Heidi Zak took out a full-page ad in The New York Times publicly responding to Razek’s remarks. “We are flattered for the mention, but let me be clear: We may not have been a woman’s first love, but we will be her last,” Zak wrote.  She added “ThirdLove is the antithesis of Victoria’s Secret.”

The conflict between the two companies remains in their ideologies with ThirdLove being an all-inclusive lingerie company that sells 78 different bra sizes and Victoria’s Secret catering to a smaller demographic. As Victoria’s Secret chief marketing officer Ed Razek put it “we market to who we sell to”—sizes 30A—40DDD—”and we don’t market to the whole world.”

A review of the USPTO’s records indicates the examining attorney assigned to Victoria Secret’s application cited many “First Loves” as causing a potential conflict and “Third Love” doesn’t appear to be one of them.  Victoria’s Secret mark was actually refused due to likelihood of confusion with more than one registered mark including U.S. Registration No. 4814289, for the Mark “First Love” in the class that includes “Women’s clothing, namely, shirts, dresses, skirts, blouses; pants; athletic pants; athletic shirts.”  The examining attorney responded via a non-final office action explained when comparing marks, “the proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that consumers who encounter the marks would be likely to assume a connection between the parties.”  Where the goods of an applicant and registrant are “similar in kind and/or closely related,” as in this case, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  The registrant’s mark is  FIRST LOVE and applicant’s mark is  VICTORIA’S SECRET FIRST LOVE.   Applicant’s mark merely adds a house mark to the registrant’s FIRST LOVE mark.  Adding a house mark to an otherwise confusingly similar mark will not obviate a likelihood of confusion under Section 2(d).   It is likely that goods and/or services sold under these marks would be attributed to the same source.   The USPTO found the marks are confusingly similar and in this case, applicant’s bras, lingerie, panties and sports bras are closely related to the registrant’s women’s clothing, namely, shirts, dresses, skirts and blouses because they are women’s clothing items; and applicant’s athletic shorts, athletic tights, jackets, sport shirts/sports shirts, sports bras, sports jerseys, sports pants, swimwear and tank tops are closely related to the registrant’s athletic pants and athletic shirts because they are clothing worn for athletics and sports. Victoria’s Secret needs to put their big panties on and file a response which is due a week from today. We will be waiting to see if Victoria’s Secret has success with registering their mark since there are a lot of other loves out there in the registration office at the USPTO that could cause problems. It will be interesting to see if ThirdLove files an opposition if Victoria’s Secret’s mark actually makes it to publication.

Ashley Brooks