In Dessert Beauty Inc. v. Fox, 568 F. Supp. 2d 416 (S.D.N.Y. 2008), Judge Chin of the Southern District of New York found that cosmetics company Dessert Beauty, Inc.’s descriptive use of the terms “love potion fragrance” and “belly button love potion fragrance” was a fair use of Mara Fox’s LOVE POTION trademark for perfumed essential oils.

By way of background, Fox’s LOVE POTION mark was registered in 1995. In 2001, it became incontestable.Fox’s “Love Potion Perfume” was sold through her website, www.lovepotionperfume.com, and was described as “the first Magical, Mystical, Wearable Love Potion.” Fox also claimed that her Love Potion Perfume “REALLY IS a Love Potion.”

Dessert Beauty (“DBI”) launched a line of beauty products in 2004 that was endorsed by pop singer Jessica Simpson, and consisted of a wide range of edible beauty products including scrubs, bubble baths, and perfumes. Two of the fragrance products in the line were described as “love potion fragrance” and “belly button love potion fragrance”, respectively, and like the other products in the line, were sold under the DESSERT trademark, with a “TM” symbol next to the word DESSERT. DBI’s logo, which also appeared on all DBI products, was a pink lipstick stain with the mark DESSERT inside a black circle. Beneath the circle was the phrase “Sexy Girls Have Dessert.”

Upon learning of the DBI use of “love potion”, Fox took aggressive action to protect her LOVE POTION trademark, including sending cease and desist letters to DBI as well as Sephora USA LLC, a large cosmetics chain that carried DBI’s products. Fox also waged a public campaign against DBI on her website and issued a negative press release concerning DBI’s activities. DBI commenced an action against Fox in the Southern District of New York, seeking, inter alia, a declaratory judgment of noninfringement.

The court concluded that DBI’s use of the term “love potion” was a fair use within the meaning of section 33(b)(4) of the Lanham Act, 15 U.S.C. § 1115(b)(4). The court noted that the fair use doctrine, which is a complete defense to infringement liability, permits the use of protected marks to describe certain aspects of goods, but not as marks to identify those goods. In order to avail itself of the fair use defense, the court stated that DBI must be able to establish that its use of the “Love Potion” term (1) was other than as a mark, (2) in a descriptive sense, and (3) in good faith.

The court found all three conditions met. First, DBI’s use of “love potion” within the phrases “love potion fragrance” and “belly button love potion fragrance” was found to be a non-trademark use of “love potion” because DBI did not use the term to identify the source of its products – that function was performed by the DESSERT name, the logo, and the “Sexy Girls Have Dessert” slogan. Rather, the court concluded that DBI used the “Love Potion” phrases merely to identify particular products within its line, and not to distinguish them from non-DBI products. Also relevant was the fact that DBI did not include a “TM” symbol next to the “Love Potion” phrases, but instead displayed the “TM” next to the word DESSERT.

Second, the court found that DBI’s use of “love potion” was descriptive, even though it described a product that was not, in actuality, a true “love potion”. The court stated that use of a mark is descriptive if it is used in a “descriptive sense,” citing Cosmetically Sealed Indus., Inc. v. Chesebrough-Ponds USA Co., 125 F.3d 28, 30 (2d Cir. 1997). The words “love potion” were intended not to describe the literal nature of the product, but rather in a broader sense to describe how DBI hoped consumers would make use of its product. The court also noted that “love potion” is a common term in the English language, defined in several dictionaries as a product used for the purpose of attracting the opposite sex. The court also pointed out that there is no other reasonably available word to describe the meaning captured by the term “love potion.”

Third, the court found that DBI had clearly acted in good faith. Fox had argued that DBI’s bad faith was shown by the fact that it did not conduct a trademark search prior to the launch of its beauty products, and did not discontinue the sale of its allegedly infringing products after receiving Fox’s cease and desist letters. The court dismissed both of these arguments. First, with respect to the trademark search, the court pointed out that it is well established that failure to perform a trademark search does not, standing alone, prove bad faith. As to the cease and desist letters, the court was not persuaded that DBI’s decision to proceed in the face of the letters amounted to bad faith. Indeed, the court noted that DBI believed that it was proceeding in a fair manner, and that that belief turned out to be correct. Accordingly, the court held that on the record before it no reasonable jury could find bad faith on the part of DBI, and thus found in favor of DBI on its motion for summary judgment.