Victoria's Secret Stores Brand Management, Inc. v. Bob's Stores LLC

Filing 38

ORDER AND PERMANENT INJUNCTION. Signed by Judge Gregory L Frost on 8/19/2014 (kn)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
VICTORIA’S SECRET STORES BRAND
MANAGEMENT, INC.,

CASE NO. 2:13-CV-1261
JUDGE GREGORY L. FROST

Plaintiff,
v.
BOB’S STORES LLC,
Defendant.
ORDER AND PERMANENT INJUNCTION
WHEREAS, Plaintiff Victoria’s Secret Stores Brand Management, Inc. (“Victoria’s
Secret”) and Defendant Bob’s Stores LLC (“Bob’s”) have agreed to resolve this lawsuit in part
by way of entry of the following Consent Judgment and Permanent Injunction.
Accordingly, it is hereby ORDERED, ADJUDGED, AND DECREED THAT:

1.

This is an action for trademark infringement, false designation of origin, unfair

competition, trademark dilution, and trade dress infringement pursuant to the Lanham Act, as
amended, 15 U.S.C. §§ 1051, et seq., as well as common law trademark infringement and unfair
competition.
2.

This Court has jurisdiction over the subject matter in issue based on 28 U.S.C. §§

1331, 1338(a) and (b), and 1367(a), as well as 15 U.S.C. § 1121(a). This Court has personal
jurisdiction over Victoria’s Secret and, for purposes of this action only, Bob’s agrees that the
Court has personal jurisdiction over it. This Court has continuing jurisdiction to enforce the
terms and provisions of this Consent Judgment and Permanent Injunction. Venue is also proper
in this Court pursuant to 28 U.S.C. §§ 1391(b) and (c).

3.

Victoria’s Secret Stores Brand Management, Inc. is a corporation organized and

existing under the laws of the State of Delaware with its principal place of business at Three
Limited Parkway, Columbus, Ohio 43230.
4.

Bob’s Stores LLC is a corporation organized and existing under the laws of the

State of New Hampshire with its principal place of business at 160 Corporate Court, Meriden,
Connecticut 06450.
5.

Victoria’s Secret is well-known throughout the United States and beyond as a

source of premium apparel, beauty and personal care products, and related goods and services.
In connection therewith, and since at least as early as 2001, Victoria’s Secret has used the
VICTORIA’S SECRET PINK trademark, and Victoria’s Secret has established the PINK
trademark as a premier brand that is well-recognized throughout United States and elsewhere.
Victoria’s Secret has also used the “86” trademark in connection with apparel and related
products and services since at least as early as 2005.
6.

Victoria’s Secret’s rights in and to the PINK and 86 trademarks are embodied, in

part, in the following valid and enforceable United States Trademark Registrations:

Registration No.

Mark

Registration Date

Class(es)

2,820,380

VICTORIA’S SECRET PINK

Mar. 2, 2004

25

2,992,758
3,226,760

VICTORIA’S SECRET PINK
VICTORIA’S SECRET PINK

Sept. 6, 2005
April 10, 2007

25
20, 24

3,234,287
3,386,282

PINK DOG
PHI BETA PINK

April 24, 2007
Feb. 19, 2008

25
24, 25

3,502,263

VICTORIA’S SECRET PINK

Sept. 16, 2008

35

3,520,974
3,544,100

VICTORIA’S SECRET PINK
DRENCHED IN PINK

Oct. 21, 2008
Dec. 9, 2008

3
3

3,565,927

PINK IS LIFE

Jan. 20, 2009

35

3,631,914
3,665,102

SQUEAKY PINK
PINK UNIVERSITY

June 2, 2009
Aug. 4, 2009

3
16, 18, 25

Registration No.

Mark

Registration Date

Class(es)

3,726,618
3,729,795

PINK ME UP
PINK NATION

Dec. 15, 2009
Dec. 22, 2009

3
35

3,750,738

PINK U

Feb. 16, 2010

25

3,782,747

LIVE PINK

April 27, 2010

3

3,805,362

June 22, 2010

25

3,840,101

Aug. 31, 2010

35

Sept. 28, 2010
Nov. 30, 2010

3
3

Apr. 5, 2011

35

3,853,421
3,883,774

3,940,420

LIFE IS PINK
HOPE PINK
Word portion: 1986 PINK
NATION VICTORIA’S
SECRET

3,992,764

VICTORIA’S SECRET PINK

July 12, 2011

25

3,993,100

I ONLY SLEEP IN PINK

July 12, 2011

25

4,010,593
4,061,503

ALOHA PINK
HOT FOR PINK

Aug. 9, 2011
Nov. 22, 2011

3
3

4,061,574

MAKE ME PINK

Nov. 22, 2011

3

4,061,578
4,097,199

FOREVER PINK
GIVE A LITTLE PINK

Nov. 22, 2011
Feb. 7, 2012

3
3

4,097,220

MERRY MERRY PINK

Feb. 7, 2012

3

4,164,695

OH WHAT FUN IS PINK

June 26, 2012

3

4,219,269

PINK BEACH

Oct. 2, 2012

3

4,336,625

LIFE IS PINK IS LIFE

May 21, 2013

35

Registration No.

Mark

Registration Date

Class(es)

3,490,221

86

Aug. 19, 2008

25

3,684,473

86

Sept. 15, 2009

20, 24

The foregoing trademarks, along with Victoria’s Secret’s PINK trademark, are referred to herein
collectively as the “VS Trademarks.”

7.

The VS Trademarks are distinctive and famous marks.

8.

Victoria’s Secret has rights in and to a number of designs as well as the design

and overall appearance of certain apparel products which indicate to members of the consuming
public that these products are of a high quality originating from Victoria’s Secret. Common
elements of the designs and lettering that encompass Victoria’s Secret rights are attached hereto
as Exhibit A and by this reference are herein incorporated.
9.

Bob’s, its officers, agents, servants, employees, and attorneys, and all other

persons who are in active concert or participation with any of the foregoing, who receive actual
notice of this Consent Judgment and Permanent Injunction, are hereby permanently enjoined
from engaging in any of the following activities:
A.

manufacturing, advertising, distributing, marketing, promoting, offering

for sale, and/or selling any products bearing any of the VS Trademarks or confusing
similar marks, unless such products are authorized by Victoria’s Secret;
B.

manufacturing, advertising, distributing, marketing, promoting, offering

for sale, and/or selling any products bearing any of the graphic elements depicted in
Exhibit A in connection with the word PINK or in connection with the numbers 80-86,
unless such products are authorized by Victoria’s Secret;
C.

using the VS Trademarks, and/or any other designation that is a colorable

imitation of and/or is confusingly similar to the VS Trademarks, in connection with the

manufacture, advertising, distribution, marketing, promotion, offering for sale, and/or
sale of products neither originating from nor authorized by Victoria’s Secret;
D.

making any statement or representation whatsoever, or using any false

designation of origin or false description, or performing any act, which can or is likely to
lead the trade or public, or individual members thereof, to believe that any products
manufactured, distributed or sold by Bob’s are in any manner associated or sponsored by
or connected with Victoria’s Secret, or are sold, manufactured, licensed, sponsored,
approved, or authorized by Victoria’s Secret, or otherwise taking any action likely to
cause confusion, mistake, or deception as to the origin, approval, sponsorship, or
certification of such products;
E.

effecting assignments or transfers, forming new entities, or associations or

utilizing any other device for the purpose of circumventing or otherwise avoiding the
prohibitions set forth in Subparagraphs (A) through (D); and
F.

aiding, abetting, contributing to, or otherwise assisting anyone with

infringing or diluting the VS Trademarks.
10.

Prior to commencing any litigation or contempt proceedings of any kind, or

taking any other action to enforce the terms of this Consent Judgment and Permanent Injunction,
Victoria’s Secret shall provide written notice to Bob’s detailing the factual basis for any
allegations by Victoria’s Secret that Bob’s has violated the terms of this Consent Judgment and
Permanent Injunction and/or otherwise engaged in conduct that infringed the VS Trademarks.
Bob’s shall then have ten (10) business days to respond to the written notice. Thereafter,
Victoria’s Secret may not initiate litigation and/or contempt proceedings unless Bob’s does not
voluntarily agree to cease and desist from engaging in the allegedly infringing conduct, including
by ceasing to market and sell any accused product.
Notice of this Consent Judgment and Permanent Injunction pursuant to Federal Rule of Civil
Procedure 65 shall be effective by mailing of a copy of this Order to Bob’s at 160 Corporate
Court, Meriden, Connecticut 06450. It is not necessary for Bob’s to sign any form of

acknowledgement of service.12.

Each party to pay its own costs and fees.

IT IS SO ORDERED:
Dated: August 19, 2014
By: /s/ Gregory L. Frost
Hon. Gregory L. Frost
United States District Court Judge