Wednesday, July 23, 2008

Victoria’s Secret Files Lawsuit Over Bizarre Nevada Trade Names

This falls into that category of trademark infringement lawsuits called “What were they thinking?”

Last week, Victoria’s Secret filed a trademark infringement lawsuit against several named individuals and purported corporations in the U.S. District Court for the District of Nevada. See Victoria's Secret Stores Brand Management, Inc. vs John Shortt and Family and Cesar E. Batres and Nazir Akhtar and Families, et al, Case No. 08-cv-394 (D. Nev. July 18, 2008). A copy of the complaint can be downloaded here.

The Defendants filed three separate trade name registrations with the Nevada Secretary of State – all of which mention “Victoria’s Secret.”

But what is bizarre is the specific trade names that were registered by the Defendants. Keep in mind that under Nevada law, a “trade name” as “a word, symbol, device, or any combination of them, used by a person to identify his business, vocation or occupation and distinguish it from the business, vocation or occupation of others.” See Nevada Revised Statutes (N.R.S. §600.310. While this may sound similar to a trade mark or service mark, it is technically different because it identifies the business itself whereas a trademark is “any word, name, symbol or device, or any combination of them, adopted and used by a person to identify goods made or sold by him and to distinguish them from goods made or sold by others” (N.R.S. §600.300) while a service mark is “mark used in the sale or advertising of services to identify the services of one person and distinguish them from the services of others.” (N.R.S. §600.290).

On January 12, 2005, one of the Defendants registered the following trade name (Reg. No. TN00370012):
The AAmerican Awinv Js Victoria's Secret Mfg Vip Fashions Garments Worldwide Franchise For Europe,Asia,United Statcs,E.E.C Countries, … [additional countries omitted] Papua New Guinea,New Zealand,New Caledonia,Kiribati,Nauru,Franch Polynesia, All the Above Countries 100% Franchise From The Above Corporations Ownership 100% Only Mr,Mohammed Ali El Mansouri and Mohammed Ali EI Mansouri Familys,And Also Son Ahmed Mohammed Ali EI Mansouri Projects of Plants of A/Z Category Manufacturing and Trading in Worldwide International and Domestoc,Also A/Z Projects Plants of all Kinds OfReady Made Garments,Vips,Fashions Garments, Footwear, Manufacturing,Manufactures, Products,Produces,and Trading In Worldwide,Above Names have 100% Full Right To Issued The Any One or Any Corporations,Companys,Or To Any Manufacturing, Manufacturers, Products, Worldwide International Marketing and Business Link to Above Corporations Franchise in Above Countries,Only Have 100% Full Rights To Set Up In Above Countries Above Corporations Branch Offices, Or Make Shareholders,Or Workers Partners,Or Commission Agents,Only In Above Countries,Mr,Mohammed Ali El Mansouri Familys have 100% Fun Right') To Issued The Above Corporations Franchise or Set Up Above Corporations Branch Offices in any Of The Above countries,or Make Shareholders, Workers Partners, Commission Agents in Above Conturies Only, Mr., Mohammed Ali El Mansouri Son Ahmed Mohammed Ah El Mansouri Have 100% Full Rights From The Above Corporations Can Issued The Above Corporations Franchise,OrSet Up Branch Offices,Or Make Shareholders,Workers Partners, Or Commission Agents inAbove Countries Only, By Above Corporations Have Seucred Up to Thirty Five Millions United States Dollars For Manufacturing and Trading in Projects Plants Above to Sponsored and Secured by The Above Corporations Building Societes Mohammad Khan Worldwide Banking Service E.E.C. Countries Mr. Mohammed Ali El Mansouri and Mohammed Ali El Mansouri Familys and Son,Ahmed Mohgammed Ali El Mansouri and Mohammed Ali El Mansouri Familys and Mr. Mohammed Ali El Mansouri Son Ahmed Mohammed Al El Mansouri Have 100% A/Z Full Rights To Signed Any Official Documents,for the Names of The Above Corporations, By Official With Full Rights To Signed for the Names of The Above Corporations, By Official With Full Rights To Signed for the Above Corporations, in The Above Countries, in Setup Branch Offices, Governments Offices Governments Departments, With 100% Full Power from The Above Corporations Until Next Notice From The Above Corporations Board of Directors,and Chairmans,Nazir Akhtar,Sultan Mohammad,Ref.Numbers,00034884-April,29,2000..
(errors in original).

On June 29, 2006, one of the Defendants registered the following trade name for “knited [sic.], netted; and textile fabric” (Reg. No. E0489502006-9):

Mohamed Ali A.Salem Al Mansouri Worldwide International. Eyurvpean,Asian,Arab The Mansouri The INlWALI EWlMAAM International Arab European Middle East,United Arab Emirates,World Islamic Countries World The International Victoria's Secret Wor1dwide European Arab Industries Mills of China Hong Kong Manufacturing and Trading In All Types of Woman's Garments Vip Fashions,Ladies Under Clothing A/Z Products and Manufacturers,Manufacturing, Manufacturing Manufacturers,Productions Women's Fashions Garments E.T.C Since,jULY,2000 Up Date,Mohamed Ali El Mansouri and Familys have Full Rights To Set Up any Countries of the World Branch Offices and have Full Rights to Make Worldwide Agents With Commission Bases OnlyWorkers Partners With On Commission Bases Only,Shareholders ann Workers mohamed Ali Al Mansouri and Son Ahmed Mohammed Al EI Mansouri and Familys Sponsored and Secured For Five Years From June,19,2005 To Five Years Up To Seventy Five Millions English Pounds Only Also Plants Projects Manufacturing Women's Fashions Garments Under Clothing FromThe Bank of England Until Next Notice 100% Ownership Is Mohammed Ali EI Mansouri and Familys All The Rights Are Reserved By The Mohamed Ali EI Mansouri and Son and Familys Only All Legal, Activities Worldwide Thousand Thousand Types of Manufacturing of Women's Fashions Garments
(errors in original).

Finally, on March 27, 2005, one of the Defendants registered the following trade for the business of “knitted, netted; and textile fabric and substitutes therefor” (Reg. No. E0226492006-9):
Worldwide European International Mohamed Ali AI-Mansouri WEIMAAM Worldwide European Asian, Middle East Victoria's Secret Manufacturing,Manufacturers,Products,Productions,Mfg Vip Fashions Garm All Types of Ladies, Fashions Garments,E,t,c All Women's,Ladies A/Z Items,Productions,Products,and Manufacturing,Exporters,lmporters,General Dealers,General Contractors,Buyers and Suppliers All Kinds of Items of Ladies,and Women's Wear Manufacturing and Trading In All Items of Ladies Wear Fashions of European Products of Brand of Awinveimaam Victoria's Secret Manufacturing,Manufacturers Women's Fashions Garments Et,c Since,July,2000 Up Date Goodstanding,AlI E,E,C Countries,All Asian Countries,All Middle East Countries,United Arab Emirates,All Islamic Countries World,With Full A/Z 100% Rights Up To Five Years From The Date Signed March,25,2006, The Above Corporations Ownership Is Only Mr,Mohammed Ali EI Mansouri and Mohammed Ali El Mansouri Familys and Also Son Ahmed Mohammed Ali El Mansouri,Above Names Have Full Rights To Set Up Any Countries of The World Branch Offices and Have Full Rights To Make Worldwide Agents, With Commission Bases Only,Workers Partners,with Only Commission Bases Only,Shareholder and Workers,Above Corporations Secured Up To FiftyFive Millions English Pounds Also Plants Projects Industries Mills and Mr,Mohammed Ali EI Mansouri and Son Ahmed Mohammed Ali El Mansouri and Familys Sponsored and secured For Five Years From March,25,2006 From Bank of England London E,C2 England Time of The Starting Sponsored and Secured Above Corporations 6 Months Times After The Set Up Above Business In The United Arab Emirates or Any Countries of The World, Workers Partners Listing For Five Years From March 25,2006 Under (5) Names of Workers Partners Working On Only Commission Bases Only Until The Next Notice From The Above Corporations Owners Mr,Mohammed Ali EI Mansoun and Son Mr,Ahmed Mohammed Ali El Mansouri Names of Workers Partners,Mr,Naresh Prasad,Mrs,Kusum Lata,P,O,Box 4156 Nabua Suva Fiji Island,460492/641751,Miss,Kuldip Kaur,Mr,Harpushpinder Singh,Mr,Sarban Lal Dass, C/o Kamiljit Singh Permar Fatehgarh Rahimpur Road Saroop Nagar Street#5 Hoshiarpur Punjab India,Colony Bahliwwal Kdhia P,O,Jallandhar Punjab India,Mr,Tahim Ali Shah,660763,Mrs,Meharoma Sharidun Nisha,551733,Son,Tazeem Zuhyar Shah,551734.P.O.Box949 Lautoka Fiji Islands,Above Corporations 100% Owners Is Mr,Mohammad Ali El Mansouri and Familys and Son Mr,Ahmed Mohammed Ali El Mansouri All Legal Activities Worldwide
(errors in original).

There are so many things one can say about these truly bizarre trade name filings.

First, they demonstrate that the Nevada Secretary of State, like all other states, merely file whatever is provided to them – no matter how ridiculous it may seem to file – so long as it does not conflict with a name already registered in their own database. One wonders what the specimen looked like that the Defendants filed with the paperwork to show use of the mark as a "trade name" – if there was even a specimen beyond what appears to be a poor translation of some kind of fabric manufacturing agreements.

Second, it is not clear why the Defendants felt it necessary to file these agreements as “trade names.” It’s obvious that they are not a “trade name” under which they intend to operate – try fitting all of that on a billboard. Did they get some bad legal advice? Did they not seek legal counsel and misunderstand what a “trade name” filing is for? Were they really afraid someone was going to start using a confusingly similar name, especially given that the “name” itself is confusing enough. Were the parties attempt to officially “record” these agreement with the notion that they would be made more enforceable?

Finally, while I certainly understand and appreciate Victoria’s Secret efforts to go after a business that has incorporated its famous mark into a “trade name” without its consent, is there really any likelihood of confusion (or even dilution) here? I seriously doubt there is any other evidence out there that these Defendants are even operating under these “trade names” – if you can even call them that. And assuming that these filings were to somehow constitute legitimate trade names, there may be an argument that the defendants’ use of “Victoria’s Secret” is nominative fair use if the defendants are indeed manufacturers of Victoria’s Secret lingerie (although arguably they could identify their product or service without using the Victoria’s Secret’s mark).

The complaint filed by Victoria’s Secret indicates that attempts were made to send cease and desist letters to the Defendants, but that all of the addresses on record are mail forwarding services which did not have any information on where any mail to defendants would be forwarded.

Anybody else have any thoughts explaining these unusual trade name filings?

1 comment:

ishallread said...

These "unusual" activities are ways to use others fame / copyrights / trademarks to lure clients and business to their websites. Look at the track record of cybertech in this same article as prime example. It is a network of over 2,300 domains, all gathering personal and financial database, in most case, using images that are unlicensed and or copyright infringing. Imagine if you are a major public corp that wants to "farm" data from areas that are questionable... you may consider setting these fake sites up with forwarding mailboxes (as you state) that do not directly connect to your major public firm. It would be harder to prevent or litigate in civil courts it as it is esoteric as to who is gaining profits....
Read this link: