Glow Industries, Inc. v. Lopez
| Decision Date | 23 July 2003 |
| Docket Number | No. CV 02-06167 MMM PJW.,CV 02-06167 MMM PJW. |
| Citation | 273 F.Supp.2d 1095 |
| Parties | GLOW INDUSTRIES, INC., Plaintiff, v. Jennifer LOPEZ, Coty, Inc., a corporation, Sweetface Fashion Company, LLC, Jennifer Lopez Enterprises, inclusive, Defendants. |
| Court | U.S. District Court — Central District of California |
Kenneth I. Sidle, Corey J. Spivey, Gipson Hoffman & Pancione, Los Angeles, CA, Arthur Aaronson, Aaronson & Aaronson, Encino, CA, Katherine Hendricks, O Yale, Jr., Stacia Lay, Hendricks & Lewis, Seattle, WA, for Plaintiff.
John E. Porter, Eve M. Coddon, Paul Hastings Janofsky & Walker, Joseph M. Gabriel, Glen Allen Rothstein, Liner Yankelevitz Sunshine & Regenstreif, Los Angeles, CA, Lisa Ann Pearson, James D. Weinberger, Fross Zelnick Lehrman & Zissu, Robert L. Sherman, Paul Hastings Janofsky & Walker, New York City, Laura A. Wytsma, Jenifer M. Placzek, Sonnencshein Nath & Rosenthal, Los Angeles, CA, Mark S. Lafayette, Romy Corliss, Gursky & Ederer, New York City, for Defendants.
ORDER DENYING PLAINTIFF'S MOTION FOR PARTIAL SUMMARY JUDGMENT
Plaintiff Glow Industries, Inc. ("Glow") filed this action on August 7, 2002, alleging that the use by defendants Jennifer Lopez and Coty, Inc. of the mark GLOW BY J.Lo in marketing perfume and other beauty products constituted trademark infringement and unfair competition. Glow Industries alleges that it has marketed and sold beauty products under the mark GLOW since 1999, and that it has filed an application to secure federal registration of the mark. Defendants answered the complaint on October 8, 2002; simultaneously, defendant Lopez asserted counterclaims for trademark infringement and unfair competition based on her recent acquisition of the mark GLOW KIT. Plaintiff has now moved for summary judgment on Lopez's counterclaims, asserting that the assignment of the GLOW KIT mark to Lopez is invalid, and that there is no evidence of a likelihood of confusion between the GLOW and GLOW KIT marks.
Terry Williamson founded Glow Industries, Inc. in 1999, to design, produce, market and sell a brand-intensive line of fragrance, bath and body care products under the trademark GLOW.1 Glow Industries' application to register the GLOW trademark represents that the mark was first used in commerce on February 28, 1999. It identifies the goods on which the mark is used as skin soaps, bubble bath, skin lotions, skin moisturizers (International Class 3), and candles (International Class 4).2 It does not identify fragrance as a product on which the mark is used or anticipated to be used,3 and Glow Industries' first sale of its "GLOW Scent" perfume did not occur until December 2001.4
Glow Industries chose the mark GLOW because of the positive feeling the word evokes, rather than to describe a characteristic of its products or the results that could be obtained from using the products.5 President Terry Williamson conceptualized GLOW as "a highly branded product line, [and paid] careful attention ... to creating uniqueness and consistency [in] all aspects of its development."6 Glow Industries product catalog and its glowspot.com website state that the company is "committed to developing and offering ... the finest products to use in your bath and on your skin" because the people "at GLOW are avid users of bath and body products and are obsessive about the sanctity of the bathing ritual."7 Glow Industries also claims that its products offer users certain health benefits. For example, GLOW Oil has antioxidant properties that help to "repel free radicals," while GLOW Mist is a hydrosol that reputedly has skin care benefits.8 Williamson testified at her deposition that some of Glow Industries' moisturizers, bath treatments and facial masks also contain ingredients that help to promote healthier skin.9
Glow Industries launched the GLOW product line nationally in April 2000 at the Paramount Hotel in New York City. Approximately forty members of the national press were present. It then launched the line to wholesalers on the national beauty website "gloss.com" in spring 2000, and at Bergdorf Goodman in New York City in fall 2000.10 Since that time, Glow Industries has developed thirty-six wholesale clients across the country. These include a number of specialty stores, four Nordstrom stores, and the national website "whoisthefairest.com."11 Williamson concedes, however, that certain of these wholesale accounts have stopped carrying GLOW products.12 Specifically, Glow Industries stopped shipping to Bergdorf Goodman in 2001. Williamson states that Glow Industries terminated its relationship with Bergdorf because its "accounts payable didn't pay as agreed."13 Glow Industries' catalog identifies only twenty-one stores that carry GLOW products, in addition to the websites "glowspot.com" and "whoisthefairest.com."14 GLOW products have been sold in all fifty states through department stores, specialty boutiques, mail order and the internet.15 Williams asserts that GLOW products have been physically displayed and are available for sale in twenty-nine retail establishments in twenty states.16 Additionally, Nordstrom purportedly approached Glow Industries about a "national roll-out" of GLOW products that was ultimately to include eighty-eight Nordstrom stores across the country.17 This roll-out did not occur, and Nordstrom offered no explanation for its failure to proceed.18 Glow Industries has had nearly 100 wholesale inquiries from entities throughout the United States, as well as several foreign inquiries, which it has declined.19
Glow Industries began selling GLOW products in the Chicago area via mail order in the summer of 1999, and has sold its product line in area stores since May 2001.20 Between May 2001 and October 2002, Glow Industries sold approximately $23,903 of GLOW products to wholesale clients in Illinois. The retail value of these goods was $47,806.21 While Williams has no direct information that the goods were sold, or that they were sold at retail value,22 she does not believe her wholesale client Soapstone discounts any merchandise, and she infers that GLOW products were sold because Soapstone reordered.23 Williams has prepared a chart estimating that retail sales of GLOW products in Illinois between June 1999 and October 2002 may have totaled as much as $55,345.24 Lopez disputes the use of this estimate, as it calculates Glow Industries' wholesale sales at retail value. Lopez argues that the Glow Industries' actual wholesale sales of $23,903, coupled with its Glow Industries' retail sales of $7,539, should be considered the total of the business it did in Illinois during the relevant period.25
Glow Industries' business plan focuses on grass-roots marketing and brand cohesiveness. For this reason, it has done no paid advertising for GLOW products.26 The company has had opportunities to promote GLOW products, however. Soap Opera Digest purchased a number of GLOW gift pails for soap opera actors who participated in cover shoots for the magazine, and as a result, representatives of "The Young
and the Restless" soap opera requested permission to use the mark in the name of a fictional beauty company on the show, "Glow by Jabot."27 GLOW products were also featured on the Showtime cable network program "Soulfood," which in turn led to GLOW products being featured on the website
An E! Entertainment representative contacted Glow Industries in September 2001 about a new show on beauty and fashion, hosted by Lopez's sister Lynda Lopez, and sought permission to use the name "Glow" on the show. Glow Industries acceded, based on representations that the show would be product-focused and would air only in Los Angeles and New York. GLOW products were slated to be featured on one episode of the show.30 NASCAR purchased GLOW "male pails" for their top ten drivers in connection with an awards ceremony held at the Four Seasons in New York in 2000.31 It was asked twice to include GLOW products in gift baskets given to Oscar presenters, and to provide GLOW products for MTV Movie Awards, Grammys, and Latin Grammys gift baskets.32 It did not do so, as it "do[es] not contribute products to organizations that aren't charitable in nature."33
Glow Industries participates in a "Bath Butler" available at Ritz-Carlton hotels, where customers "can order a specific bath experience just like you might order off of a room service menu, and a person will come up to your room, draw the bath for you, put different products in the bath for you, [and] depending on which bath experience you elected, bring you food and beverage that accompanies that experience as well as in many cases a candle and body lotion."34 Glow Industries worked with Ritz-Carlton to develop "bath experiences" featuring GLOW products for more than one Ritz-Carlton property, including those in Cleveland, Ohio and Marina del Rey.35 Williams asserts that GLOW products are also sold in Ritz-Carlton gift shops, although she has only seen them available in the Marina del Rey hotel.36 Glow Industries did not establish any guidelines for Ritz-Carlton's use of the GLOW mark, except to specify that it be used in connection with the Bath Butler program or the sale of GLOW products.37
Between February and late summer 2002, Glow Industries participated in a co-branding venture with Reebok. Reebok issued a "maglog," i.e., a catalog with editorial content, which featured both an interview with Williamson and her then-business partner, and "product shots" of several GLOW products.38 As part of the venture, certain GLOW products were...
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