A & H Sportswear Co. v. Victoria's Secret Stores

Decision Date17 August 2001
Docket NumberNo. 94-7408.,94-7408.
Citation167 F.Supp.2d 770
PartiesA & H SPORTSWEAR CO., INC. and Mainstream Swimsuits, Inc., Plaintiffs, v. VICTORIA'S SECRET STORES, INC., and Victoria's Secret Catalogue, Inc., Defendants.
CourtU.S. District Court — Eastern District of Pennsylvania

Frank J. Colucci, Colucci & Umans, New York, NY, H. Robert Fiebach, Cozen and O'Connor, Philadelphia, PA, Richard P. Jacobson, Colucci and Unams, New York, NY, for Victoria's Secret Stores, Inc., Victoria's Secret Catalogue, Inc.

DECISION AND ORDER

VAN ANTWERPEN, District Judge.

For nearly seven years this trademark dispute has moved back and forth between this Court and the Third Circuit Court of Appeals. As a result of the most recent partial remand from the Third Circuit Court of Appeals, we again find ourselves weighing in on the issues dividing these parties.

I. BACKGROUND

We begin with a brief review of the tortured history of this case. In the initial trial, we found that the use of THE MIRACLE BRA as applied to lingerie did not create a likelihood of confusion, but there was a possibility of confusion when the mark was applied to swimwear. A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 926 F.Supp. 1233, 1269 (E.D.Pa.1996) ("A & H I"). Since much work would be required to set damages, we certified our entire opinion to the Third Circuit for review, but they refused. Following a damages trial, we ruled that Defendants could not use THE MIRACLE BRA trademark with respect to swimwear unless they used a disclaimer and paid Plaintiffs a reasonable royalty. A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 967 F.Supp. 1457, 1482-83 (E.D.Pa.1997) ("A & H II")

Both parties appealed. The Third Circuit, en banc, affirmed our finding of no likelihood of confusion with regard to lingerie but determined that the proper standard in this Circuit was now "likelihood of confusion." A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 166 F.3d 197, 206 (3d Cir.1999) ("A & H III").1 They remanded the case to us to consider whether there was a likelihood of confusion with regard to THE MIRACLE BRA swimwear. Id. The Third Circuit also directed that we examine whether the doctrine of reverse confusion was implicated in this case. Id. at 207.

On remand, we found that there was no likelihood of direct confusion. A & H Sportswear Co. v. Victoria's Secret Stores, 57 F.Supp.2d 155, 169 (E.D.Pa.1999) ("A & H IV"). That is, it was unlikely that a consumer would regard THE MIRACLE BRA swimwear as a product of A & H. Id. We then determined, under existing case law, that there were no grounds for a claim of reverse confusion. Id. at 176-178. Accordingly, we denied injunctive relief. Id.

The parties appealed again. The Court of Appeals, this time in a panel decision, affirmed the decision as to our conclusion that there was no likelihood of direct confusion. A & H Sportswear Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 227 (3d Cir.2000) ("A & H V"). With regard to the claim of reverse confusion, the Court of Appeals held that we applied an incorrect test. Id. at 236. The Court remanded the case to us, directing that we apply a new ten factor test to evaluate the merits of Plaintiffs' reverse confusion claim. Id. at 229. The Court also noted that we need not hear new evidence. Id. at 238.

On January 11, 2001, Plaintiffs filed a "Motion For Hearing on Contempt and Additional Hearing." We denied this motion in its entirety. A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 134 F.Supp.2d 668, 669 (E.D.Pa.2001) ("A & H VI"). In particular, we refused to open up the voluminous record and receive additional evidence. Id. at 681. Previously, the parties were provided with extensive opportunities to submit evidence and make arguments.2 From October 25 to November 3, 1995, we held a non-jury civil trial to determine the issue of liability. A & H I, 926 F.Supp. at 1235. We received into evidence over three-hundred exhibits. On May 24, 1996, we issued a nearly forty page opinion which made 75 findings of fact and 6 conclusions of law. Id. To settle the issues related to damages, we made additional findings of fact and further evaluated the evidence. A & H II, 967 F.Supp. at 1460-1483. On appeal, the case was the subject of two substantive opinions by the Third Circuit. See A & H Sportswear v. Victoria's Secret Stores, 166 F.3d 191, 195 (3d Cir.1999) (panel decision); A & H III, 166 F.3d at 197 (en banc decision). After the case was remanded to us, we received multiple memorandums from the parties concerning the issues on remand. We then issued another substantive opinion addressing the issues of likelihood of direct and reverse confusion. A & H IV, 57 F.Supp.2d at 155. The case was appealed again. The Court of Appeals issued yet another substantive opinion which remanded the case to us again. A & H III, 166 F.3d 197. Plaintiffs then filed a motion for hearing on contempt and additional hearing on issues remanded to us. A & H VI, 134 F.Supp.2d at 669. We received extensive briefs on these issues. Although we refused to hold a hearing, allow further discovery, or receive additional evidence, we did permit the parties to file lengthy briefs and submit up to twenty five additional proposed findings of fact. Id. at 681. This Court has expended an extraordinary amount of time and devoted tremendous resources to this case, reacting to matters both properly before us and the extraneous issues the parties choose to bring up. We do not think that the parties should be able to re-open the record just because the litigation has been protracted. In addition, for the reasons set forth in our opinion of March 12, 2001, we believe that the existing record is sufficient to decide the issues before us.

In A & H VI, we directed the parties to brief the issue of reverse confusion only, since our adjudication of Plaintiffs' direct confusion claim was affirmed on appeal. 134 F.Supp.2d at 681. Thus, presently before us are:

1. Plaintiffs' Memorandum Concerning Reverse Confusion,3 filed on April 11, 2001;

2. Defendants' Memorandum Concerning the Likelihood of Reverse Confusion, filed on May 14, 2001;

3. Plaintiffs' Reply Memorandum, filed on May 31, 2001; and

4. The parties proposed additional findings of fact and responses thereto.

Before turning to these issues, we wish to make plain the fact that the sole issue before us is the likelihood of reverse confusion between the MIRACLESUIT trademark and THE MIRACLE BRA trademark as applied to swimwear. The issue of likelihood of confusion between MIRACLESUIT and THE MIRACLE BRA lingerie has already been settled. A & H I, 926 F.Supp. at 1263-4. There, we found that Plaintiffs had failed to show a likelihood of confusion with respect to Defendants' use of its mark on lingerie. Id. The Third Circuit affirmed this determination. A & H III, 166 F.3d at 201-10. On remand, the Third Circuit only asked us to consider whether the doctrine of reverse confusion was implicated with respect to the swimwear. Id. at 201, 207. We limited our discussion of reverse confusion to the swimwear in A & H IV and neither the parties nor the Third Circuit disagreed with this decision. In the briefs presently before us, the parties only discuss the likelihood of reverse confusion with respect to the swimwear.4

In any event, we do not find that that there is a likelihood of reverse confusion with respect to Defendants' use of THE MIRACLE BRA trademark on lingerie. As discussed more fully below, the factors looked at are the same, regardless of whether the claim is for direct or reverse confusion. Considering the relative minor changes to the Lapp factors, and in light of the extensive analysis in A & H I, we find that Plaintiffs have not shown a likelihood of reverse confusion with respect to the use of THE MIRACLE BRA trademark on lingerie.

II. FACTS

We will provide only a brief overview of the facts in the record since they were previously presented in multiple decisions. See, e.g., A & H I, 926 F.Supp. at 1235-54. A & H Sportswear, Co. Inc. ("A & H")5 is a manufacturer of about 10 percent of the swimsuits made in the United States. Its bathing suits are made from a patented fabric designed to make the wearer look slimmer. On October 27, 1992, it received a federal trademark registration for use of the MIRACLESUIT mark for swimwear.

Victoria's Secret Stores, Inc., and Victoria's Secret Catalogue, Inc. (collectively "Victoria's Secret"), have sold women's lingerie under the name THE MIRACLE BRA since 1993, holding a federal trademark registration for use of the mark with lingerie since 1994. In 1994, they introduced THE MIRACLE BRA swimwear. Later that same year, A & H commenced this litigation for trademark infringement and related claims. After suit was filed, Defendants began to use a disclaimer which stated that it was not associated with the MIRACLESUIT. Eventually, Defendants were denied a trademark registration for the use of THE MIRACLE BRA mark on swimwear by the Patent and Trademark Office (PTO).

In connection with this motion the parties have also agreed to several additional findings of fact.

1. Victoria's Secret has a well established trade name and the economic power to advertise THE MIRACLE BRA swimwear.
2. Victoria's Secret is a wealthier, more powerful company A & H Sportswear, Inc. or Mainstream Swimsuits, Inc.
3. Victoria's Secret was aware of the Miraclesuit mark for swimwear when it adopted THE MIRACLE BRA for swimwear.
4. Victoria's Secret considered whether the adoption of the mark might result in confusion.

5. Victoria's Secret was aware,...

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