As retailers and consumers alike gear up for another hot summer, what kind of “miracles” women will be finding in their swimsuits has been determined by Judge Franklin S. Van Antwerpen of the U.S. District Court, Eastern District of Pennsylvania. The January 9, 2002 decision enjoined Victoria’s Secret from using its successful “The Miracle Bra” name or any other indication of “miracle” on swimwear because it led to a likelihood of reverse confusion with A&H Sportswear’s “The Miraclesuit.” “The Miraclesuit” trademark, held by A&H Sportswear, is for a swimsuit intended to slenderize the wearer’s appearance. Victoria’s Secret extended the cleavage-enhancing “Miracle Bra” technology to its swimwear from its lingerie line.
The decision ends more than seven years of litigation between A&H Sportswear and Victoria’s. Over the course of what Judge Van Antwerpen called a “long and tortured case,” the U.S. District Court had ruled on a number of issues including possibility of confusion, likelihood of confusion, and most recently, reverse confusion and appropriate damages, on remand from the Court of Appeals.
Direct confusion occurs when a junior user adopts a mark similar to a senior user’s, and derives benefit from the reputation of that senior user. By contrast, reverse confusion occurs when the junior user is the more prominent market player, putting the senior user in danger of being swallowed by the junior user, losing its corporate identity. The court held that reverse confusion in this case also deprived the public of the knowledge of the particular features of A&H Sportswear’s “The Miraclesuit.” Throughout the seven years of litigation, the parties agreed that Victoria’s Secret did not cause the confusion in bad faith in attempting to extend its success with a lingerie product to the swimwear market.
The court denied any monetary relief to A&H Sportswear. Royalty payments would have been inappropriate because Victoria’s Secret was not a licensee of A&H Sportswear. In terms of damages from lost profits, A&H could not prove that it lost any sales because of the reverse confusion. To the contrary, the court raised the possibility that A&H Sportswear actually profited from the confusion. The court was also persuaded by the fact that Victoria’s Secret had made significant profits from the “Miracle Bra” lingerie line, which is clearly distinguishable from the swimsuit market and A&H Sportswear’s products.
This decision departed from its history, granting injunctive relief to A&H Sportswear. In the past, the court held that a disclaimer would be sufficient to distinguish Victoria’s Secret’s swimwear from the “Miraclesuit.” However, under the refined reverse confusion test and citing the administrative burdens of enforcing the disclaimer, the court finally granted the injunction. In terms of the burden of the injunction on Victoria’s Secret, the court held that Victoria’s Secret’s past success with its swimsuits, which put it at the top of its market, would be sufficient to assure that the effects would be minimal. This ruling does not affect Victoria’s Secret’s ability to continue to use “The Miracle Bra” in reference to lingerie.
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