Owner of registered trademark LOVE POTION for fragrances has no claim of infringement against company that uses the phrase "love potion" descriptively in identifying two of its fragrance products, the Southern District of New York recently held. Finding plaintiff's use of "love potion" descriptive, and not a trademark use, and no evidence of bad faith, the court granted summary judgment in declaratory judgment action.



Fox owns an incontestable trademark registration for the mark LOVE POTION for perfume. Dessert Beauty Products, Inc. ("DBI") began selling beauty products under the mark DESSERT in combination with a logo consisting of a pink lipstick stain. DBI's DESSERT line included two fragrance products: the "Love Potion Fragrance" and the "Belly Button Love Potion Fragrance," identified in text on product packaging as "deliciously kissable love potion fragrance" and "deliciously kissable belly button love potion." DBI sought a declaratory judgment that its use either did not infringe Fox's trademark or constituted permissive fair use; sought to cancel Fox's trademark registration on genericness grounds; and sued for intentional interference with business relations arising from Fox's public relations campaign about the dispute, which included postings on its website labeling DBI as an illegal, immoral, and unethical bully. Fox counterclaimed for trademark infringement and both parties moved for summary judgment.


DBI argued that its use constituted a fair use under Section 33(b)(4) of the Lanham Act. To avail itself of the fair-use defense, DBI was required to demonstrate that it used the phrase LOVE POTION: (1) other than as a trademark; (2) in a descriptive manner; and (3) in good faith. Rejecting Fox's argument that "love potion" can only describe a consumable liquid (as contrasted with a fragrance), the court noted that in making its descriptiveness determination, it was charged with considering "not only whether the mark used describes certain aspects of the alleged infringer's own goods but also whether the mark as used describes an action the alleged infringer hopes consumers will make of its product." In addition to dictionary definitions, and in an unusual interpretation of enforcement evidence, the court pointed to more than eighty demand letters sent by Fox as evidence for DBI that "Love Potion" was widely used by many merchants and was the only "reasonably available word" to capture the intended meaning. The court also found it persuasive that the phrase was used to identify and distinguish types of products within DBI's overall line along with other descriptors, such as "bath bubbles" and "sugar scrubs," rather than as an identifier used to distinguish DBI products from non-DBI products; and that unlike the product's primary trademark DESSERT, the phrase "love potion" appeared in text rather than standing alone, was not accompanied by any form of trademark notice, was placed "off center" on the packaging, and was presented in a smaller size font. Finally, the court rejected Fox's argument that DBI's failure to conduct a trademark search or cease using the phrase following receipt of a demand letter was evidence of DBI's bad faith. The court reaffirmed the Second Circuit's position that failure to perform a trademark search does not, standing alone, prove bad faith. The court also reaffirmed existing precedent that the failure to completely abandon use of a mark after receiving a demand letter is insufficient, as a matter of law, to support an allegation of bad faith in the absence of other evidence of an intent to pass off the product as that of the trademark owner. Noting DBI's good-faith belief that its use of "love potion" was merely descriptive, and the significant differences in the parties' respective product packaging, as well as DBI's prominent placement of its DESSERT trademark, the court concluded that no reasonable jury could find bad faith.


The court found DBI's use of "love potion" constituted a fair use under the Lanham Act providing an "absolute defense" to liability. The court declined to reach DBI's claim for cancellation of Fox's mark on genericness grounds, dismissing this claim upon the parties' consent. Finally, the court dismissed DBI's claim of tortious interference, finding no evidence that Fox used wrongful means to interfere with DBI's business relationships with third parties.