Last month, a Wisconsin district court granted Harley-Davidson’s motion for summary judgment, finding that Harley had not infringed Plaintiff’s SCARECROW trademark when it used the term to describe a paint set.

Plaintiff, a free-hand artist known as SCARECROW, paints designs on motorcycle bodies, and provides his services at various trade shows, motorcycle clubs and rallies, including the Harley Owners Group (“HOG”) events. The mark SCARECROW is used on his booth, and as his DBA. Plaintiff also generally paints a small scarecrow on each of the bikes he customizes. Plaintiff has painted over 22,000 bikes.

For years, Harley has sold custom paint sets that allow individuals to create customized designs on their motorcycles. Each paint set contains a set of colors, selected by the Harley staff, and the Harley staff paints a corresponding design to show how the colors may be used. The paint sets are given names that describe the proposed design, like “venom” (which has an image of a snake), or “gambler” (for a gold-black dice combination). Included in the sets released in 2006 was “Scarecrow” for a black and blue paint set illustrated with a scarecrow and barbed wire. Subsequent to discovering the use of the term “scarecrow” along with a scarecrow image, Plaintiff sued.

In finding that Harley’s use of the image and the term did not infringe Plaintiff’s SCARECROW trademark, the court noted that the catalog scarecrow image looked nothing like Plaintiff’s trademark image. It also pointed out the Harley scarecrow was surrounded – indeed dwarfed – by Harley’s familiar HARLEY DAVIDSON trademark. The use of the term “scarecrow” in association with the particular paint set was merely descriptive use because it described the painted image. The court also noted that while Plaintiff may have legitimate trademark rights in the mark SCARECROW, he cannot appropriate the term to himself and thereby prevent others from using the term in a descriptive sense.

Practice Note: This might have been more of a close call had Harley not had an existing pattern and practice of using fanciful terms to describe its paint colors, making the “scarecrow” term just one of many descriptive uses.

Juicy Couture, a division of Liz Claiborne, has filed a trade dress infringement lawsuit against Victoria’s Secret, alleging the lingerie giant copied Juicy’s protectible trade dress, namely its pervasive use of the color pink as a brand identifier and it’s practice of putting a brand name on the seat of sweat pants (in this case, Victoria’s Secret actually uses the word “pink”). Juicy also claims that Victoria’s use of LOVE PINK is an attempt to capitalize on Juicy’s use of its LOVE G&P mark.

In addition, the suit alleges Victoria’s Secret copied Juicy’s “Sweet Shoppe” packaging for its own clothing. The packaging makes clothing appear to be in the shape of candies, bon bons, and lollipops. Juicy claims it has been using the candy-wrap trade dress since 2005.

The complaint, filed April 28, 2008, makes numerous comparisons between the designs put out by Juicy and Victoria, including a comparison of the Juicy Couture logo, which looks like a university crest, and the logo created by Victoria’s secret, also a university crest. Although Juicy has roughly 75 trademark applications and registrations, primarily for word or design marks, it relies on its common law rights for its trade dress claims.

A case against Victoria’s Secret may be difficult to establish, given what Juicy is trying to prove: namely that the grouping of the entire line, viewed in its entirety, amounts to the infringement even if the individual parts may not alone be protectible. For instance the placement of words on the seat sweat pants has been done by universities for years. Indeed, the JUICY brand capitalizes on the university crest. The practice of wrapping clothes to look like candies has been done by street vendors in New York to sell their wares. The color ‘pink’ has been associated with women’s clothing (and brands), too. While it seems obvious that Victoria’s Secret has copied the overall concept of the line, a judge may find it difficult to hold that Juicy owns the color PINK for women’s clothing, except as a brand color.

Practice Note: This author’s legal opinion may not be as valuable as that of her receptionist’s, who when told about the case said, “but why is Juicy Couture suing Victoria’s Secret? They carry Juicy’s stuff in their stores!”