## Facts

- Fortune Dynamic, Inc., a California footwear company, used the mark DELICIOUS on women’s and young women’s footwear starting in 1997 and obtained a Principal Register registration in 1999.
- Fortune’s DELICIOUS mark was incontestable and supported by substantial sales and advertising; it sold over 12 million pairs of DELICIOUS shoes from 2005–2007 and spent about $350,000 annually on advertising.
- Victoria’s Secret Stores Brand Management, Inc. ran a one-month promotion in February 2007 for its BEAUTY RUSH product line.
- During the promotion, Victoria’s Secret stores sold or gave away a hot pink tank top bearing the single word “Delicious” across the chest in silver script.
- Victoria’s Secret did not conduct a trademark clearance search for “Delicious” before using it and asserted its use was descriptive fair use.
- Fortune sued for trademark infringement in the Central District of California; the district court granted summary judgment to Victoria’s Secret, applied the Sleekcraft factors against Fortune, found fair use as a bar, and excluded Fortune’s consumer survey evidence.
- Fortune appealed.

## Issues

1. Whether Victoria’s Secret’s use of “Delicious” on a promotional tank top was likely to cause consumer confusion with Fortune’s DELICIOUS footwear mark under the Sleekcraft factors.
2. Whether Victoria’s Secret established the Lanham Act descriptive fair use defense as a matter of law, including use “otherwise than as a mark,” descriptive use, and good faith.
3. Whether the district court erred in excluding Fortune’s survey evidence and granting summary judgment despite fact disputes affecting consumer perception.

## Decision

- The Ninth Circuit reversed the grant of summary judgment for Victoria’s Secret and remanded for trial.
- The court held that genuine disputes of material fact existed on likelihood of confusion under Sleekcraft.
- The court held that the descriptive fair use defense presented fact questions, including whether “Delicious” functioned as a mark and whether Victoria’s Secret acted in good faith.
- The court held the district court abused its discretion by excluding Fortune’s survey at the summary judgment stage.

## Legal Principles

- Summary judgment is generally disfavored in trademark cases because likelihood of confusion and related defenses commonly turn on fact-intensive questions of consumer perception.
- Under Sleekcraft, similarity of marks, strength of the mark, proximity of the goods, marketing channels, consumer care, intent, and other factors often permit competing inferences that must be resolved by a factfinder.
- The descriptive fair use defense requires proof that the term is used (1) otherwise than as a mark, (2) descriptively, and (3) in good faith; these elements frequently involve disputed facts when the term is displayed prominently on goods.
- Consumer survey evidence is a common method of proving confusion; methodological criticisms usually affect weight rather than admissibility, particularly when the evidence is offered to defeat summary judgment.

## Conclusion

The Ninth Circuit required a trial because the record permitted reasonable disagreement about whether consumers would likely be confused by Victoria’s Secret’s prominent “Delicious” use on apparel and whether the use qualified as descriptive fair use, and because excluding Fortune’s survey evidence improperly skewed the summary judgment analysis.


Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Mgmt., Inc., 618 F.3d 1025 (9th Cir. 2010)