"Love Potion" Dispute: NY Court Finds Dessert Beauty's Product Line Did Not Infringe Fox's Perfume Mark

Holding:

In a trademark dispute over the term "love potion," the U.S. District Court for the Southern District of New York ruled that Dessert Beauty, Inc. ("DBI") did not infringe Maria Fox's trademark for perfumed essential oils. The district court specifically found that DBI's use of the term constituted fair use, giving three reasons for such conclusion. First, DBI had used the words "love potion" not to describe the source of the product but as a product name in a generic, descriptive sense. Second, DBI had used the words in a descriptive sense, given that the term "love potion" is a common term in the English language. And third, the evidence only showed DBI's good faith, based on the finding that all DBI products had the DESSERT trademark and indicia, reflecting DBI's efforts to differentiate its products in the marketplace rather than to trade on Fox's, or any other seller's, good will. Because the district court found no material issue warranting trial with respect to the fair use defense, it granted DBI's motion for summary judgment on the trademark claims.

Detailed Summary:

The dispute in this litigation involved two words: “love potion.” Defendant and third-party plaintiff Mara Fox registered the trademark LOVE POTION for perfumed essential oils in 1995 and filed a declaration of incontestability for the LOVE POTION mark in 2001. In 2004, plaintiff DBI launched a line of beauty products that included two fragrance products described as “love potion fragrance” and “belly button love potion fragrance.” At issue was whether DBI’s use of the words “love potion” infringed Fox’s LOVE POTION trademark, or whether the use was fair use, immune from liability. Opinion, p. 1.

In this case, DBI sought a…

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