mdbheadshotfinalEvery so often, someone or other submits papers to a court that are a pleasure to read, often because the papers show such a firm grasp on both facts and law that the reader can not but feel a surge of renewed confidence that things will turn out as they should—in one lawsuit, anyway.

The memorandum of law in support of the motion for summary judgment submitted by Bath & Body Works Brand Management in its action against Summit Entertainment regarding use of the word “twilight” in connection with a “woods-scented fragrance” is such a submission.

You thought I was leading up to a sarcastic remark, maybe? No. This is adulation borne of genuine admiration.

Twilight in a bottle.

The background, in brief: Bath & Body Works (BBW) makes and sells… well, bath and body products, mostly for women. Summit is the production company responsible for the Twilight Saga film series based on author Stephanie Meyer’s books “about vampires, werewolves, and a teenage love triangle.” [Another sarcasm note: I will not make any disparaging remarks about the books or the movies, none of which I have read or seen. Mainly because I am not a tween.] In 2009, BBW came out with a new fragrance called “Twilight Woods,” after having purchased from another (non-party) entity all rights to the registered mark “TWILIGHT” for use on personal care products. Summit, which has no such registration (its application was denied because of the existence of the one later assigned to BBW), nevertheless made sufficient threatening overtures that BBW brought an action for declaratory judgment.

BBW has an impressive array of argumentary arrows in its quiver, as it were—including laches! And it’s a good laches argument!—but the standout among them is… you’ll never believe this… the argument that there is no likelihood of confusion, on the part of relevant potential consumers, of the sources of the parties’ respective products, notwithstanding that both parties use the word TWILIGHT on their wares. You know, that old concept. The concept this blog is named for.

BBW devotes a solid fourteen pages of its memo discussing the Polaroid factors and setting forth just how unlikely confusion is in this instance—indeed, BBW had survey work done, and the data demonstrate an affirmative lack of confusion, of both the potential and actual varieties—but there’s also this bombshell: When Summit applied to register the mark TWILIGHT for personal care products (at a time before BBW had obtained the right to such a mark from that aforementioned non-party, Coty Germany GmbH/Coty Inc.), the USPTO rejected Summit’s application, citing the prior registration held by Coty. According to BBW’s memo (which cites, of course, to a statement of undisputed facts), Summit and its counsel (the same counsel it has in the pending suit) “argued that its use was unlikely to lead to consumer confusion because the marks had ‘remarkably different connotation and commercial impressions.’”

That is—as Summit asserted—the TWILIGHT that Summit was going to put on its movie-tied-in body products was a reference to the movie Twilight, whereas the TWILIGHT used by Coty referred to “that actual time [of day] dubbed twilight.” (Which BBW’s use of the word/mark still does, by the way. BBW does not want its fragrance for women 35 and older associated with a movie series that appeals most to girls 25 and under.)

Oral argument of the motion in Bath and Body Works Brand Management, Inc. v. Summit Entertainment, LLC is scheduled to be heard by the Honorable George B. Daniels on the morning of August 7 (at the request of Summit, as it happens, and over the objection of BBW).

2 thoughts on “Lacklihood of Confusion.”
  1. The question that was left unanswered … Can BBW use a statement asserted by Summit’s counsel during Summit’s trademark application as evidence of its factual argument that there is no likelihood of confusion in the subject trademark infringement defense? If so what weight would a jury put on this type of evidence?

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