The U.S. District Court for the Southern District of New York ruled that the entertainment company responsible for the “Twilight” film series is entitled to a trial on claims that its trademarks were infringed by a cosmetics company’s use of the marks TWILIGHT WOODS and TWILIGHT CRUSH. Bath & Body Works Brand Management, Inc. v. Summit Entertainment, LLC, No. 11 Civ. 1594 (S.D. N.Y. Mar. 21, 2014).
Bath and Body Works (BBW) is a cosmetics retailer that operates more than 1,500 stores in the United States. In 2011, BBW filed a lawsuit seeking a declaration that its scented products bearing the word “twilight” do not infringe trademarks owned by Summit Entertainment. Summit is a film studio and a subsidiary of Lions Gate Entertainment that produced and distributed the “Twilight” movies based upon the novels of best-selling author Stephanie Meyer. When BBW filed the declaratory judgment action, Summit asserted trademark infringement counterclaims against BBW. After a period of discovery, BBW filed a motion for summary judgment, contending that Summit’s counterclaims lacked merit as a matter of law. In a March 21, 2014 decision, the court denied BBW’s motion, clearing the way for Summit to present its counterclaims to a jury.
As explained by the court, Summit owns 40 U.S. trademark registrations for “Twilight.” Some of the registrations apply to the production and distribution of motion pictures. However, due to the commercial success of the films, Summit has also produced or licensed several lines of merchandise for which it owns trademark registrations, including clothing, candles, and purses and other bags; nail polish; and cosmetics (specifically for products called “Luna Twilight” and “Twilight Venom”).
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In order to establish a case of trademark infringement, the mark owner must prove that its trademark is valid and that the defendant’s use of a similar mark presents a likelihood of confusion. According to the court, a “likelihood of confusion” means that “numerous ordinary prudent purchasers are likely to be misled or confused as to the source of the product in question because of the entrance in the marketplace of defendant’s mark.” The court made the following observations in light of factors identified by the U.S. Court of Appeals for the Second Circuit as relevant in determining whether there is a likelihood of confusion:
The strength of the plaintiff’s mark;
The similarity of the defendant’s mark to plaintiffs’s mark;
The proximity of the products sold under defendant’s mark to plaintiff’s products;
Where the products are different, the likelihood that plaintiff will “bridge the gap” by selling products being sold by defendant;
The existence of actual confusion among consumers;
Whether defendant acted in bad faith in adopting the mark;
The quality of the defendant’s products; and
The sophistication of the consumers.
