Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA643281
`ESTTA Tracking number:
`12/08/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91218853
`Defendant
`Thomas Pink Limited
`WENDI E SLOANE
`BARACK FERRAZZANO KIRSCHBAUM & NAGELBERG
`200 WEST MADISON STREET, SUITE 3900
`CHICAGO, IL 60606
`UNITED STATES
`trademarks@bfkn.com
`Motion to Dismiss - Rule 12(b)
`Wendi E. Sloane
`trademarks@bfkn.com
`/Wendi E. Sloane/
`12/08/2014
`Motion to Dismiss.pdf(60002 bytes )
`Exhibit A.pdf(4356581 bytes )
`Exhibit B .pdf(2220465 bytes )
`Exhibit C.pdf(1240049 bytes )
`Exhibit D.pdf(197284 bytes )
`Exhibit E - part 1.pdf(4239702 bytes )
`Exhibit E - part 2.pdf(4567962 bytes )
`Exhibit F.pdf(63378 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91218853
`Serial No. 79/140,090
`
`)
`
`) )
`
`) )
`
`)
`)
`
`) )
`
`)
`
`VICTORIA’S SECRET STORES
`BRAND MANAGEMENT, INC.
`
`Opposer,
`
`v.
`
`THOMAS PINK LIMITED,
`
`Applicant.
`
`MOTION TO DISMISS
`
`Pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure and Section 503.02 of
`
`the TBMP, Applicant Thomas Pink Limited (“Applicant” or “Thomas Pink”) respectfully
`
`requests that the Trademark Trial and Appeal Board (the “Board”) dismiss with prejudice the
`
`Notice of Opposition filed by Opposer Victoria’s Secret Stores Brand Management, Inc.
`
`(“Opposer” or “VS”) for the reasons stated herein.
`
`I.
`
`INTRODUCTION
`
`VS filed the sole opposition to Applicant’s design mark
`
`and design
`
`(“Applicant’s Pink Design Mark”). To maintain this Opposition, VS must establish that it has
`
`standing to oppose Applicant’s Pink Design Mark based on a reasonable belief that it will be
`
`damaged by registration of this mark.
`
`In an effort to satisfy this threshold requirement, VA
`
`alleges that Applicant’s Pink Design Mark creates a likelihood of confusion with its “PINK”-
`
`formative marks in Class 3 (the “VS PINK Marks”). This is untrue, and VS knows it.
`
`Conveniently omitted from VS’s pleading is any mention of VS’ recent federal court
`
`litigation against Thomas Pink, in which VS sought a declaratory judgment that its “PINK”-
`
`formative marks, including the VS PINK Marks at issue here, do not create a likelihood of
`
`1
`
`

`
`confusion with the very mark VS now opposes. The omission of this critical fact is unfortunate
`
`but understandable.
`
`Pleading it would demonstrate that VS has no standing to oppose
`
`Applicant’s Pink Design Mark because it has acknowledged in a judicial pleading that it would
`
`not be harmed by the registration of Applicant’s Pink Design Mark.1 Nor can VS have any
`
`concern that Thomas Pink would challenge VS’s registration or use of the VS Pink Park.
`
`In
`
`response to VS’s request for declaratory relief, Thomas Pink gave VS a Covenant Not to Sue,
`
`which included the Applicant’s Pink Design Mark and the VS PINK Marks. The parties have
`
`therefore judicially acknowledged that these marks can co-exist without harm to either party.
`
`Without any reasonable belief in damage, VS is no more than an “intermeddler” without
`
`the necessary standing to oppose the registration of the Applicant’s Pink Design Mark on any
`
`grounds, including the claim that Thomas Pink lacks bona fide intent to use the subject mark.
`
`The Opposition should therefore be dismissed in its entirety.
`
`There is a second, independent basis to dismiss Count I of the Opposition – it fails to
`
`state a claim upon which relief can be granted. In Count I, VS alleges that there is a likelihood
`
`of confusion between the parties’ marks. This allegation is directly contradicted by the Principle
`
`Register. The U.S. Patent and Trademark Office (“PTO”) has not refused any of VS’s currently-
`
`pending applications over Applicant’s Pink Design Mark, either before or after VS filed its
`
`federal court declaratory judgment actions.
`
`It is not surprising that the PTO concluded these marks could co-exist on the Register.
`
`Not only is the PINK word mark already registered in Class 3 by a third party, but dozens of
`
`1 Thomas Pink therefore suspects that this Opposition is likely a response to disputes between the parties
`outside the United States, where the parties are disputing their respective rights. Such extraterritorial
`disputes are, of course, irrelevant to the question whether registration of Applicant’s Pink Design Mark
`creates a likelihood of confusion with Opposer’s Pink-formative marks.
`
`2
`
`

`
`“PINK”-formative marks, in addition to Opposer’s VS PINK Marks, co-exist in Class 3 without
`
`any evidence of confusion. Count I of the Opposition should therefore be dismissed for VS’s
`
`failure to state a claim upon which relief may be granted.
`
`II.
`
`ARGUMENT
`
`A.
`
`THE NOTICE OF OPPOSITION.
`
`On October 10, 2014, VS filed its Notice of Opposition against Thomas Pink’s
`
`application to register the design mark
`
`in connection with “cosmetics; perfumery; non-
`
`medicated toiletries; soaps; non-medicated skin preparations” in Class 3. VS asserts that it owns
`
`16 registrations and one application for standard character composite marks that contain the
`
`component PINK.
`
`(Notice of Opposition ¶9.)
`
`In Count I, VS alleges that the registration of
`
`Applicant’s Pink Design Mark would create a likelihood of confusion with the VS Pink Marks.
`
`In Count II, Opposer alleges that Applicant does not have a bona fide intention to use
`
`Applicant’s Pink Design Mark in commerce. The basis for this allegation appears to be that
`
`Applicant’s Pink Design Mark is based on an International Registration, which in turn is based
`
`on a United Kingdom registration that VS has opposed. 2 (Notice of Opposition ¶13.)
`
`B.
`
`STANDARD FOR A MOTION TO DISMISS.
`
`A Notice of Opposition is subject to dismissal under Rule 12(b)(6) when the Notice fails
`
`2 VS’s opposition of the UK application is part of a larger dispute between the parties in the United
`Kingdom and elsewhere outside the United States. Thomas Pink filed a claim against VS in the United
`Kingdom, alleging that VS’s use of PINK, inter alia, infringed Thomas Pink’s rights, constituted passing
`off, and was detrimental to the distinctive character of Thomas Pink’s PINK trademark. In July 2014, the
`High Court of Justice, Chancery Division, Community Trade Mark Court, Intellectual Property, issued
`judgment in favor of Thomas Pink. That judgment is now on appeal. Elsewhere outside of the United
`States, VS and Thomas Pink are engaged in litigation and opposition proceedings relating to their
`respective uses of the PINK trademark. Of course, these extraterritorial disputes are of no relevance to
`the parties’ respective rights in the United States.
`
`3
`
`

`
`to establish that either (1) the petitioner has standing to bring the proceeding; or (2) a valid
`
`ground exists for denying the registration sought. TBMP § 503.02 (citing Lipton Industries, Inc.
`
`v. Ralston Purina Co., 670 F.2d 1024, 1026 (C.C.P.A. 1981)). The Board reviews a motion to
`
`dismiss by assuming all well-pleaded allegations in the Petition are true, and construing these
`
`allegations in a light most favorable to the petitioner. Young v. AGB Corp., 152 F.3d 1377, 1378
`
`(Fed. Cir. 1999).
`
`C.
`
`OPPOSER LACKS STANDING TO OPPOSE APPLICANT’S PINK DESIGN MARK.
`
`Standing is a threshold requirement for any opposition, intended to prevent litigation
`
`where there is no real controversy between the parties. Lipton Industries, supra, 670 F.2d at
`
`1028-29. To establish standing, an opposer must first meet the requirements of 15 U.S.C. §
`
`1063(a)3, and, in addition, satisfy two judicially-created standing requirements. Coach Servs. v.
`
`Triumph Learning LLC, 668 F.3d 1356, 1376 (Fed. Cir. 2012). Specifically, an opposer must
`
`identify (i) a “real interest” in the proceedings, and (ii) a “reasonable basis” for believing that it
`
`will suffer damage if the proposed mark is registered. Ritchie v. Simpson, 170 F.3d 1092, 1094
`
`(Fed. Cir. 1999).
`
`Even under this deferential standard, VS fails to state a claim by lacking the necessary
`
`standing to bring this opposition. Therefore, Applicant’s motion to dismiss should be granted.
`
`1.
`
`Opposer Has Conceded That There Is No Likelihood of Confusion.
`
`To satisfy the requirement
`
`that
`
`it has a “real
`
`interest” in the proceedings, and a
`
`“reasonable basis” for believing that it will suffer damage if the proposed mark is registered, VS
`
`3 Section 13 of the Lanham Act recites in relevant part that: “Any person who believes that he would be
`damaged by the registration of a mark upon the principal register, including as a result of dilution under
`section 43(c) [15 USC 1125(c)], may, upon payment of the prescribed fee, file an opposition in the Patent
`and Trademark Office.”
`
`4
`
`

`
`alleges in its Notice of Opposition that “[r]egistration of Applicant’s Pink Design Mark is likely
`
`to cause confusion or mistake in the mind of the public . . . , all to the damage and injury of
`
`Opposer.” (Notice of Opposition, ¶19).
`
`“The ‘belief of damage’ required by § 13 of the Lanham Act is more than a subjective
`
`belief.” Ritchie, 170 F.3d at 1098. Rather, this belief “must have a reasonable basis in fact.”
`
`Coach Servs., 668 F.3d at 1376. Here, VS’s own judicial admissions conclusively establish that
`
`VS has neither a subjective belief that it will be damaged by the registration of Applicant’s Pink
`
`Design Mark nor a belief based upon a reasonable basis in fact. As such, VS lacks standing to
`
`oppose the registration of Applicant’s Pink Design Mark.
`
`VS has expressly conceded in United States federal court that there is no likelihood of
`
`confusion between Applicant’s Pink Design Mark and the VS PINK Marks.
`
`In fact, VS filed
`
`two declaratory judgment actions against Applicant (first on July 24, 2013 and again on January
`
`14, 2014) in the U.S. District Court for the Southern District of Ohio seeking declarations that
`
`there is no likelihood of confusion between the parties’ respective Pink trademarks, including the
`
`very marks at issue in this Opposition. (Complaint Nos. 2:13-cv-00733-EAS-TPK and 2:14-cv-
`
`00042-EAS-TPK, collectively, the “DJ Actions”; attached as Exhibits A and B).
`
`The premise of, and allegations in, the DJ Actions establish that VS has no reasonable
`
`basis to believe that there could be a likelihood of confusion between the VS “PINK” Marks and
`
`Applicant’s Pink Design Mark. VS filed its most recent complaint in the DJ Actions in January
`
`2014. VS alleged that its VS PINK Marks had never caused “an instance of consumer confusion
`
`(with Applicant) as to the source or affiliation of any of its products or services.” (1/14/14 Cplt.
`
`¶19; emphasis added)
`
`Specifically, VS’s January 2014 federal court complaint included the
`
`5
`
`

`
`following statements:4
`
` “To [VS]’s knowledge, neither its use nor its registration of the VICTORIA’S
`SECRET PINK Marks has never caused an instance of consumer confusion as to
`the source or affiliation of any of its products or services.” (1/14/2014 Cplt. ¶19.);
`
` “The Parties [VS and Thomas Pink] have been aware of one another, and their
`mutual use and registration of the above trademarks, since at least as early as
`2005.” (Id. ¶26);
`
` “The Parties [VS and Thomas Pink] have mutually sold their products online for
`many years, without conflict or confusion of any kind.” (Id. ¶27);
`
` “Despite the physical proximity of the Parties’ [VS and Thomas Pink] respective
`retail Locations, and their mutual sales of many millions of dollars in merchandise
`over many years’ time, on information and belief, [Thomas Pink has] never
`experienced even a single instance of consumer confusion as between the Parties’
`respective trademarks, products, services or businesses.” (Id. ¶29);
`
` “There is no likelihood of confusion as to the source or affiliation of the Parties’
`[VS and Thomas Pink] respective products, services, or businesses.” (Id. ¶46);
`
` “Victoria’s Secret seeks a declaratory judgment that its past and continued use
`and registration of the VICTORIA’S SECRET PINK Marks is not intended or
`likely to cause confusion, mistake, or deception as between the source,
`association, or affiliation of the Parties’ [VS and Thomas Pink] respective
`products, services or business, under the Lanham Act, Ohio trademark common
`law, or Ohio statutory law, including but not limited to R.C. § 4165.01 et seq.”
`(Id. ¶50);
`
` “Victoria’s Secret further seeks a declaratory judgment that its past and continued
`use and registration of the VICTORIA’S SECRET PINK Marks has not and does
`not jeopardize the goodwill, if any, symbolized by Thomas Pink’s registered
`trademarks, nor does it cause any other injury to Defendants under the Lanham
`Act, Ohio trademark common law, or Ohio statutory law, including but not
`limited to R.C. § 4165.01 et seq.” (Id. ¶51).
`
`VS’s Pink Marks identified in Paragraph 9 of the Notice of Opposition are included
`
`4 Fed. R. Civ. P. 11(b) states in relevant part that: “By presenting to the court a pleading, . . . an attorney
`or unrepresented party certifies that to the best of the person's knowledge, information, and belief, formed
`after an inquiry reasonable under the circumstances: .
`.
`. (2) the claims, defenses, and other legal
`contentions are warranted by existing law . . . [and] (3) the factual contentions have evidentiary support
`or, if specifically so identified, will likely have evidentiary support after a reasonable opportunity for
`further investigation or discovery.”
`
`6
`
`

`
`among the many VS Pink Marks for which it sought the declaration of non-infringement. (See,
`
`(1/14/14 Cplt. ¶17.) Applicant’s Pink Design Mark was also specifically enumerated among the
`
`many “PINK”-formative marks owned by Thomas Pink and identified by VS in the DJ Actions;
`
`as marks for which “[VS’s] use of its VICTORIA’S SECRET PINK Marks is not . . . likely to
`
`cause confusion, mistake, or deception as between the source, association, affiliation of the
`
`Parties’ respective products, services or businesses.” (1/14/14 Cplt. ¶¶25, 50; emphasis added).
`
`VS’s dismissal of the 2014 Declaratory Judgment Action is further evidence of its lack of
`
`reasonable belief in damage. VS agreed to dismiss the 2014 Declaratory Judgment Action in
`
`exchange for Thomas Pink’s Covenant Not to Sue VS for its continued use of the VS PINK
`
`Marks. (Stipulated Dismissal and Covenant Not to Sue is attached as Exhibit C.) The Covenant
`
`Not to Sue expressly referenced the subject Application and all of VS’s Pink Marks identified in
`
`Paragraph 9 of the Notice of Opposition. The Covenant Not to Sue effectively maintained the
`
`status quo of co-existence between the parties, which included both Applicant’s Pink Design
`
`Mark and VS’ Pink Marks.
`
`If VS had a reasonable belief that Applicant’s use or registration of Applicant’s Pink
`
`Design Mark created a likelihood of confusion, its actions would have been very different.
`
`It
`
`would not have sought a declaration for co-existence that included Applicant’s Pink Design
`
`Mark and the VS Pink Marks at issue in the Opposition. Nor would it have agreed to maintain
`
`the status quo with respect to these marks.5
`
`5 Given that VS conceded (and, in fact, actively sought judicial rulings that) there is no likelihood of
`confusion between its VS PINK Marks and Applicant’s Pink Design Mark, it appears that the Opposition
`have been motivated as part of litigation strategy relating to disputes between the parties outside of the
`United States. Applicant filed a trademark infringement action against VS in the United Kingdom in May
`2013 seeking to enjoin VS from using the “PINK” mark in the United Kingdom (the “U.K. Action”). (A
`copy of the Complaint in the UK Action is attached as Exhibit D.) After Thomas Pink filed the U.K.
`
`7
`
`

`
`2.
`
`No Change in Circumstance.
`
`Of course, a claim of likelihood of confusion is not the only reasonable belief of damage
`
`upon which an opposition may be based. Other examples include the following:
`
`
`
`
`
`
`
`
`
`“Plaintiff has been refused registration of its mark because of defendant’s registration,
`or has been advised that it will be refused registration when defendant’s application
`matures into a registration, or has a reasonable belief that registration of its
`application will be refused because of defendant’s registration”
`
`“Plaintiff has a bona fide intent to use the same mark for related goods, and is about
`to file an intent-to-use application to register the mark, and believes registration of the
`mark will be refused in view of defendant’s registration”
`
`“Plaintiff belongs to class of potential purchasers it alleges are disparaged or brought
`into contempt or disrepute by defendant’s mark”
`
`“Defendant has relied on its ownership of its application or registration in another
`proceeding between the parties, or defendant has asserted a likelihood of confusion in
`another proceeding between the parties involving the same marks.”
`
`TBMP § 309.03(b).
`
`Opposer has not cited any of these or other reasons in support of its newly-professed
`
`belief that registration of Applicant’s Pink Design Mark will cause it damage. This is not
`
`surprising. Since the time of the DJ Actions, the PTO has not refused any VS “PINK”-formative
`
`application over Applicant’s Pink Design Mark.6 Nor has Opposer alleged that it intends to file a
`
`new application for the identical mark “PINK” (by itself) in Class 3 that it believes would be
`
`refused over Applicant’s Pink Design Mark.
`
`In all, there has been no change in circumstance
`
`Action, VS filed the DJ Actions in the United States and a similar declaratory judgment action in Canada.
`The parties have filed various opposition proceedings to each other’s registration of certain “PINK”-
`formative marks in various jurisdictions around the world. The instant opposition appears to be the latest
`in what VS has termed “litigation warfare” over use and registration of the mark PINK. (See Victoria’s
`Secret’s Opposition to Motion to Dismiss, p.4, attached as Exhibit E.)
`6 For example, VS’s “PINK”-formative Application Nos. 86073380 and 86076695 (Registration No.
`4,561,495) were not refused over Applicant’s Pink Design Mark.
`
`8
`
`

`
`that would otherwise provide Opposer a reasonable belief that registration of Applicant’s Pink
`
`Design Mark would now cause damage.
`
`3.
`
`Belief of Likelihood of Confusion is Not Reasonable Under
`Circumstances.
`
`the
`
`Opposer’s professed belief of a likelihood of confusion if Applicant’s Pink Design Mark
`
`is registered is also not reasonable in light of the crowded field of “PINK”-formative marks in
`
`Class 3.
`
`First, the word mark PINK in standard characters is already registered in connection with
`
`various hair care preparations in Class 3 by Luster Products, Inc. (“Luster”). (See Registration
`
`Nos. 1,511,336, 1,649,218, and 1,864,492, attached as Exhibit F.) The three PINK registrations
`
`owned by Luster were registered in 1988, 1991, and 1994, and PTO did not cite any of these the
`
`registrations against any of the VS PINK Marks. The first VS PINK Mark was registered in
`
`Class 3 on October 21, 2008 and has co-existed with Luster’s PINK registrations for more than
`
`six years without confusion. All of the VS Pink Marks are standard character marks.
`
`It is not
`
`reasonable for VS to believe that Applicant’s Pink Design Mark is more likely to cause
`
`confusion with the VS PINK Marks than Luster’s PINK word mark.
`
`Second, marks containing the “PINK” formative comprise an extremely crowded field
`
`with cosmetics and other personal care products in Class 3. In addition to Luster’s PINK word
`
`mark and Opposer’s seventeen “PINK”-formative registrations and applications, there are dozens
`
`of PINK-formative marks in Class 3 for similar and identical goods, all of which have coexisted
`
`for years. These registrations include:
`
` PINK’S, Reg. No. 4,313,249, registered on April 2, 2013 for cosmetic preparation for
`eyelashes, namely, eyelash conditioners and mascara;
`
` APPARITION PINK, Reg. No. 3,882,751, registered on November 30, 2010 for
`perfumes, eau de parfum, cologne, toilet water, aftershave, shaving lotions, shaving
`
`9
`
`

`
`creams, shampoos, hair conditioners, essential oils, cold cream, personal deodorants,
`antiperspirants, skin cleansing lotions, skin moisturizer, body oil skin emollients,
`soaps, bath soaps, bath and shower gels, body lotions, skin lotions;
`
` CAROLINA PINK, Reg. No. 4,511,130, registered on April 8, 2014 for fragrances
`for personal use cosmetic preparations, non-medicated skin care preparations, hair
`care preparations, non-medicated toiletries, non-medicated sun care preparations, and
`perfumes;
`
` HOT PINK, Reg. No. 4,088,328, registered on January 17, 2012 for perfumes and
`colognes;
`
` PLAYFUL PINK, Reg. No. 3,373,542, registered on January 22, 2008 for hand and
`body lotion, bath and shower gel, hand and body cream, body mist, and gift sets
`comprising one or more of hand and body lotion, bath and shower gel, had and body
`cream, and body mist;
`
` THINK PINK, Reg. No. 2,925,743, registered on February 8, 2005 for body and skin
`lotions, body and skin creams;
`
` VERY PINK, Serial No. 85-583,362, for deodorants for personal us, anti-perspirants,
`body sprays for personal use, and shower gels;
`
` PERFECTLY PINK, Reg. No. 3,832,729, registered on August 10, 2010 for sun
`tanning preparations;
`
` TENDER PINK, Reg. No. 3,835,581, registered on August 17, 2010 for perfumery,
`deodorants, and antiperspirants for personal use.
`
`Significantly, several of these registrations are junior to several of the VS Pink Marks, yet VS
`
`has permitted them to co-exist on the Principal Register.
`
`Where, as here, there is a crowded field, the scope of protection enjoyed by each co-
`
`existing mark is narrowly-confined. TMEP §1207(d)(iii); Palm Bay Imps., Inc. v. Veuve
`
`Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693
`
`(Fed. Cir. 2005). Consumers exercise greater care, and the likelihood of confusion is minimized.
`
`Accordingly, VS’s stated fear of damage does not have a “reasonable basis in fact.” Coach
`
`Servs., 668 F.3d at 1376.
`
`10
`
`

`
`Third, VS’s alleged belief of a likelihood of confusion is also belied by the fact that the
`
`PTO has not refused any of Opposer’s currently-pending applications over Applicant’s
`
`mark after Opposer filed for declaratory judgment earlier this year. It would appear that VS’s
`
`apparent belief of a likelihood of confusion is not shared by the PTO. Nor has Thomas Pink
`
`opposed any of Opposer’s U.S. registrations or pending applications. To the contrary, Thomas
`
`Pink has provided VS with the Covenant Not to Sue.
`
`4.
`
`Opposer Lacks Standing to Bring Remaining Grounds for Opposition.
`
`Without a reasonable belief in damage, Opposer lacks the necessary standing to bring its
`
`remaining claim that Applicant lacks a bona fide intent to use
`
`in commerce. “The
`
`purpose in requiring standing is to prevent litigation . . . where a plaintiff, petitioner or opposer is
`
`no more than a mere intermeddler.” Lipton Industries, 670 F.2d at 1028-29; see also McDermott
`
`v. San Francisco Women's Motorcycle Contingent, 81 U.S.P.Q.2D (BNA) 1212 (TTAB 2006),
`
`aff’d 240 Fed. Appx. 865 (Fed. Cir. 2007). Opposer has already conceded there is no likelihood
`
`of confusion with Applicant’s Pink Design Mark. Absent such possibility of harm to its rights,
`
`Opposer’s attempt to prevent registration of the subject trademark for alleged lack of bona fide
`
`intent would be solely as an “intermeddler.” The Opposition on this second ground must
`
`likewise be dismissed given Opposer’s lack of standing.
`
`III.
`
`CONCLUSION
`
`WHEREFORE, for the foregoing reasons, Applicant respectfully requests that the Notice
`
`of Opposition be dismissed with prejudice.
`
`[REMAINDER OF THE PAGE INTENTIONALLY LEFT BLANK]
`
`11
`
`

`
`Dated: December 8, 2014
`
`Respectfully submitted,
`
`/Wendi E. Sloane/
`By:
`Wendi E. Sloane
`Sharon E. Calhoun
`BARACK FERRAZZANO KIRSCHBAUM
`& NAGELBERG LLP
`200 West Madison Street, Suite 3900
`Chicago, IL 60606-3465
`Phone: (312) 984-3100
`Fax: (312) 984-3150
`
`Counsel for Applicant, Thomas Pink Limited.
`
`Certificate of Service
`
`The undersigned, an attorney, hereby certifies that on December 8, 2014, she served a
`copy of this Motion to Dismiss upon the Opposer Victoria’s Secret Stores Brand Management,
`Inc. attorneys via email and a copy via Messenger on December 9, 2014 on:
`
`Kevin C. Parks
`LEYDIG VOIT & MAYER LTD
`Two Prudential Plaza
`180 N Stetson Avenue Suite 4900
`Chicago, IL 60601-6731
`
`/Wendi E. Sloane/_________________________
`Wendi E. Sloane
`
`12
`
`

`
`EXHIBIT A
`EXHIBIT A
`
`

`
`Case: 2:13—cv—0O733—EAS—TPK Doc #2 1 Filed: 07/24/13 Page: 1 of 13 PAGEID #: 1
`
`UNITED STATES DISTRICT COURT
`
`FOR THE SOUTHERN DISTRICT OF OHIO
`
`EASTERN DIVISION
`
`VICTORIA’S SECRET STORES BRAND
`
`MANAGEMENT, INC.,
`Four Limited Parkway
`Reynoldsburg, Ohio 43068
`
`Plaintiff,
`
`V.
`
`THOMAS PINK LIMITED,
`1 Palmerston Court
`
`Palmerston Way
`London SW8 4AJ
`
`United Kingdom
`
`and,
`
`THOMAS PINK, INC.
`19 E. 57th Street, 19th Floor
`New York, New York 10022
`
`Defendants.
`
`Civil Action No.: 2: 13-cv-13-733
`
`Judge:
`
`Jury Trial Demanded
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`
`VICTORIA’S SECRET STORES BRAND MANAGEMENT,
`
`INC.
`
`(“Plaintiff,”
`
`“Victoria’s Secret,” or “VS”) by and through its attorneys, brings this action for declaratory
`
`judgment and alleges against Defendants THOMAS PINK LIMITED and THOMAS PINK,
`
`INC. (hereinafter, collectively “Defendants” or “Thomas Pink”) as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`Victoria’s Secret seeks a declaration that its use of “VICTORIA’S SECRET
`
`PINK” and related “PINK” trademarks and trade names does not infringe Defendants’ rights in
`
`any way. On May 10, 2013, Thomas Pink Limited sued Plaintiffs related company Victoria’s
`
`

`
`Case: 2:13—cv—0O733—EAS—TPK Doc #2 1 Filed: 07/24/13 Page: 2 of 13 PAGEID #: 2
`
`Secret UK Limited in the Patents County Court in the United Kingdom (the “U.K. Action”),
`
`claiming that VS’ use of “VICTORIA’S SECRET PINK” infringes its rights. The U.K. Action
`
`places VS at imminent risk of a suit on the same grounds in the U.S. Accordingly, VS brings
`
`this action to clarify the rights of the Parties, allowing them to continue the peaceful coexistence
`
`that has been in place for many years.
`
`THE PARTIES
`
`2.
`
`Plaintiff is a Delaware corporation with offices at Four Limited Parkway,
`
`Reynoldsburg, Ohio 43068, and is qualified to do business and is doing business in the State of
`
`Ohio and in this judicial district.
`
`3.
`
`On information and belief, Defendant Thomas Pink Limited is a British company
`
`incorporated on March 5, 1986, having its principal place of business in London, England, and is
`
`transacting business in the State of Ohio and in this judicial district.
`
`4.
`
`On information and belief, Defendant Thomas Pink,
`
`Inc.
`
`is a Delaware
`
`corporation with its principal place of business in New York, New York. Upon information and
`
`belief, Thomas Pink, Inc. is a subsidiary of Thomas Pink Limited and is transacting business in
`
`the State of Ohio and in this judicial district.
`
`JURISDICTION AND VENUE
`
`5.
`
`The Court has jurisdiction over this declaratory judgment action pursuant to the
`
`Federal Declaratory Judgments Act, 28 U.S.C. §§ 220l(a) and 2202, as well as under 28 U.S.C.
`
`§§ 1331, l367(a) and l338(a) and (b), and the Lanham Act, 15 U.S.C. § 1121.
`
`6.
`
`The Court has personal jurisdiction over Defendants because, on information and
`
`belief, Defendants solicit and transact business in the State of Ohio, within this judicial district.
`
`7.
`
`Venue is proper in this judicial district under 28 U.S.C. §§ 139l(b) and (c) and
`
`1400(a).
`
`

`
`Case: 2:13—cv—0O733—EAS—TPK Doc #2 1 Filed: 07/24/13 Page: 3 of 13 PAGEID #: 3
`
`FACTS
`
`VICTORIA’S SECRET’S BUSINESS AND TRADEMARKS
`
`8.
`
`Plaintiff Victoria’s Secret owns and operates more than 1,000 VICTORIA’S
`
`SECRET retail stores nationwide. Through its VICTORIA’S SECRET stores, as well as the
`
`Victoria’s Secret Catalog, and the VS website, wvvw.victoriassecret.com, VS sells a wide range
`
`of women’s intimate and other apparel, and beauty and personal care products and accessories.
`
`Victoria’s Secret sells products using the famous VICTORIA’S SECRET trademark and trade
`
`name, as well as numerous sub-brands, trademarks and trade names.
`
`9.
`
`Beginning as early as 2001, VS has used the trademark VICTORIA’S SECRET
`
`PINK in connection with a variety of products, including women’s intimate and other apparel,
`
`and beauty and personal care products and accessories.
`
`10.
`
`Over the years, VS has actively used, promoted and registered a growing family
`
`of VICTORIA’S SECRET PINK trademarks and trade names (hereafter the “VICTORIA’S
`
`SECRET PINK Marks” or “VICTORIA’S SECRET PINK Brand”).
`
`11.
`
`For example, a section of the Victoria’s Secret website promotes the “PINK
`
`NATION,” an online community providing members with access to special offers and events.
`
`Customers may also join the PINK NATION by downloading iPad and phone “apps,” gaining
`
`access to additional branded experiences, activities, interactions and ecommerce opportunities.
`
`Over 3 million fans have downloaded the PINK NATION app for iPhone and Android;
`
`altogether, the PINK NATION has over 5.8 million registered members and is growing daily.
`
`12.
`
`Plaintiff has extensively promoted the VICTORIA’S SECRET PH\IK Brand in
`
`social media, including on Facebook, where the brand has over 1 million “fans” and over 12
`
`million “likes.”
`
`In addition, since as early as 2006, popular, national publications such as
`
`Seventeen, People, and Cosmopolitan have featured VICTORIA’S SECRET PINK branded
`
`

`
`Case: 2:13—cv—0O733—EAS—TPK Doc #2 1 Filed: 07/24/13 Page: 4 of 13 PAGEID #: 4
`
`products in fashion editorials, and the VICTORIA’S SECRET PINK Brand has been covered in
`
`mainstream news and business publications including The New York Times, Newsday, The
`
`Boston Herald, The Chicago Sun-Times and The Columbus Dispatch, among others.
`
`13.
`
`Plaintiff has prominently featured its VICTORIA’S SECRET PH\IK branded
`
`products in the Victoria’s Secret Fashion Show, an annual television broadcast on the CBS
`
`network that has become one of the most anticipated fashion events of the year, boasting
`
`viewership of more than ten million in recent years.
`
`Plaintiff also actively promotes its
`
`VICTORIA’S SECRET PINK Brand on college campuses throughout the country, with the
`
`assistance of more than 100 campus representatives, and by organizing promotional events
`
`featuring high profile musical acts and other celebrities.
`
`14.
`
`Plaintiffs VICTORIA’S SECRET PINK branded products
`
`are
`
`sold in
`
`VICTORIA’S SECRET stores, including in dedicated store sections using the VICTORIA’S
`
`SECRET PINK Brand. Plaintiffs store signage and window displays oftentimes present its VS
`
`retail locations as VICTORIA’S SECRET PINK branded or featuring VICTORIA’S SECRET
`
`PINK branded merchandise.
`
`In addition, Plaintiff operates dozens of standalone retail stores
`
`using the VICTORIA’S SECRET PINK Brand.
`
`(Together,
`
`the outlets where Plaintiffs
`
`VICTORIA’S SECRET PINK branded merchandise is available are referred to as the
`
`“VICTORIA’S SECRET PINK Locations.”)
`
`15.
`
`As a result of these promotional efforts, and VS’ commitment to providing high
`
`quality goods and services, Plaintiffs VICTORIA’S SECRET PINK Brand has become a
`
`dominant lifestyle brand targeting college girls and celebrating campus life.
`
`In December 2012,
`
`the fashion trade journal Women’s Wear Daily ranked Plaintiffs VICTORIA’S SECRET PINK
`
`Brand among the Top 100 most recognized fashion brands in the U.S., based on a survey of
`
`

`
`Case: 2:13—cv—0O733—EAS—TPK Doc #2 1 Filed: 07/24/13 Page: 5 of 13 PAGEID #: 5
`
`women aged 13 to 64, at # 94.
`
`(In the same survey, Plaintiffs VICTORIA’S SECRET brand
`
`was ranked as the # 1 most recognized fashion brand in the country.)
`
`16.
`
`Products bearing Plaintiffs VICTORIA’S SECRET PINK Marks have been very
`
`successful, yielding sales in excess of $6 billion through 2012. Sales of products bearing the
`
`VICTORIA’S SECRET PINK Marks now exceed $1.5 billion annually.
`
`17.
`
`Victoria’s Secret owns
`
`the
`
`following U.S.
`
`federal
`
`registrations
`
`for
`
`its
`
`VICTORIA’S SECRET PINK Marks (the “VICTORIA’S SECRET PINK Registrations”):
`
`%:iStrat1on
`
`Class(es)
`
`3,940,420
`
`
`
`Word portion: 1986 PINK
`NATION VICTORIA’S
`
`SECRET
`
`Sept. 28, 2010
`Nov. 30, 2010
`
`Apr. 5, 2011
`
`3,992,764
`
`VICTORIA’S SECRET PINK
`
`July 12, 2011
`
`25
`
`25
`
`25
`20, 24
`
`25
`24, 25
`
`35
`3
`
`3
`
`35
`
`3
`16, 18, 25
`3
`
`35
`
`25
`
`3
`
`25
`
`35
`
`3
`3
`
`35
`
`Mar. 2, 2004
`
`Sept. 6, 2005
`April 10, 2007
`April 24, 2007
`Feb. 19, 2008
`
`Sept. 16, 2008
`Oct. 21, 2008
`
`
`
`Dec. 9, 2008
`
`Jan. 20, 2009
`
`June 2, 2009
`Aug. 4, 2009
`Dec. 15, 2009
`
`Dec. 22, 2009
`
`Feb. 16, 2010
`
`April 27, 2010
`
`June 22, 2010
`
`- Aug. 31,2010
`
`Registration No. Mark
`
`
`
`VICTORIA’S SECRET PINK