FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
FORTUNE DYNAMIC, INC., a
California Corporation,
No. 08-56291
Plaintiff-Appellant,
D.C. No.
v.
2:07-cv-02962-R-
VICTORIA’S SECRET STORES BRAND JTL
MANAGEMENT, INC., a Delaware
OPINION
Corporation,
Defendant-Appellee.
Appeal from the United States District Court
for the Central District of California
Manuel L. Real, District Judge, Presiding
Argued and Submitted
November 2, 2009—Pasadena, California
Filed August 19, 2010
Before: Thomas G. Nelson, Jay S. Bybee, and
Milan D. Smith, Jr., Circuit Judges.
Opinion by Judge Bybee
12235
12240 FORTUNE DYNAMIC v. VICTORIA’S SECRET
COUNSEL
James C. Fedalen, Huang, Fedalen & Lin, LLP, Encino, Cali-
fornia, for the plaintiff-appellant.
Diana M. Torres, Kirkland & Ellis LLP, Los Angeles, Cali-
fornia, for the defendant-appellee.
OPINION
BYBEE, Circuit Judge:
In February 2007, Victoria’s Secret ran a one-month mar-
keting campaign promoting its new line of BEAUTY RUSH
product. As part of that promotion, Victoria’s Secret stores
sold or gave away a hot pink tank top with the word “Deli-
cious” written across the chest in silver typescript. Fortune
Dynamic, Inc. (“Fortune”), the owner of the incontestable
trademark DELICIOUS for footwear, sued Victoria’s Secret
for trademark infringement. The district court granted sum-
mary judgment in favor of Victoria’s Secret. Mindful that
“summary judgment is generally disfavored in the trademark
arena,” Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1140 (9th Cir. 2002) (quotation marks omitted), we reverse
and remand for trial.
I
Since 1987 Fortune has been in the business of designing
and selling footwear for women, young women, and children.
In 1997, Fortune began using DELICIOUS as a trademark on
its footwear for young women. Two years later, in 1999, For-
tune registered the DELICIOUS trademark for footwear on
the principal register of the U.S. Patent and Trademark Office.
FORTUNE DYNAMIC v. VICTORIA’S SECRET 12241
For most of the time relevant to this appeal, Fortune depicted
DELICIOUS in standard block lettering with a capital “D.”1
Fortune spends approximately $350,000 a year advertising
its footwear. In the three-year period from 2005 to 2007, For-
tune sold more than 12 million pairs of DELICIOUS shoes.
DELICIOUS shoes are featured on Fortune’s website and in
its catalogs, and have appeared in fashion magazines directed
specifically to young women, including Cosmo girl, Elle girl,
Teen People, Twist, In Touch, Seventeen, Latina, ym, Shop,
CB, marie claire, and Life & Style. DELICIOUS footwear is
available in authorized retail outlets throughout the United
States.2
Victoria’s Secret is a well-known company specializing in
intimate apparel. It sells a wide variety of lingerie, beauty
products, and personal care products in its 900 retail stores. In
February 2007, Victoria’s Secret launched a line of personal
care products under the trademark BEAUTY RUSH. At the
same time, it started a promotion that included giving away
a gift package of BEAUTY RUSH lip gloss and—most
importantly for our case—a pink tank top to anyone who pur-
chased $35 of beauty product.3 The tank top was folded inside
a clear plastic pouch with the lip gloss and a coupon for a
future BEAUTY RUSH purchase. Across the chest of the tank
top was written, in silver typescript, the word “Delicious”
with a capital “D.” On the back, in much smaller lettering,
there appeared the word “yum,” and the phrase “beauty rush”
1
In June 2007 (after this lawsuit was filed), Fortune applied to register
DELICIOUS in a stylized font for use on clothing.
2
In November 2006, L’egent International, Ltd. approached Fortune to
explore the possibility of L’egent’s subsidiary, Chaz, using Fortune’s
DELICIOUS Trademark on clothing and related accessories. Chaz signed
a final licensing agreement in May 2007. Chaz has yet to use the DELI-
CIOUS mark in commerce.
3
Forty-four Victoria’s Secret stores sold the tank top for $10 with any
purchase of beauty product.
12242 FORTUNE DYNAMIC v. VICTORIA’S SECRET
was written in the back collar. Victoria’s Secret models were
featured wearing the tank top, as were mannequins on in-store
display tables. Victoria’s Secret distributed 602,723 “Deli-
cious” tank tops in connection with its BEAUTY RUSH pro-
motion, which lasted until March 2007. Those tank tops not
sold or given away during the promotion were sold at Victo-
ria’s Secret’s semi-annual sale a few months later.
Victoria’s Secret executives offered two explanations for
using the word “Delicious” on the tank top. First, they sug-
gested that it accurately described the taste of the BEAUTY
RUSH lip glosses and the smell of the BEAUTY RUSH body
care. Second, they thought that the word served as a “playful
self-descriptor,” as if the woman wearing the top is saying,
“I’m delicious.” No one at Victoria’s Secret conducted a
search to determine whether DELICIOUS was a registered
trademark, but Victoria’s Secret had run a very similar pro-
motion several months earlier, this one in conjunction with
the launch of its VERY SEXY makeup. That promotion also
included a tank top, but that tank top was “black ribbed” with
“Very Sexy” written in hot pink crystals across the chest.
VERY SEXY is a Victoria’s Secret trademark.
In March 2007, Fortune filed a complaint alleging that Vic-
toria’s Secret’s use of “Delicious” on its tank top infringed
Fortune’s rights in its DELICIOUS mark. After the district
court denied Fortune’s motion for a preliminary injunction,
Victoria’s Secret moved for summary judgment. In its opposi-
tion to Victoria’s Secret’s motion for summary judgment,
Fortune submitted two pieces of expert evidence: the Mary-
lander survey (with an accompanying declaration) and the
Fueroghne declaration, both of which we discuss below.
Invoking its duty to “scrutinize carefully the reasoning and
methodology underlying the expert opinions offered,” the dis-
trict court excluded all of Fortune’s proffered expert evidence.
Without any of Fortune’s expert evidence before it, the dis-
trict court granted Victoria’s Secret’s motion for summary
FORTUNE DYNAMIC v. VICTORIA’S SECRET 12243
judgment, holding that the factors used to determine whether
there is a likelihood of confusion “weigh[ed] in favor of Vic-
toria’s Secret,” and that Fortune’s claims were “entirely
barred by the fair use defense.” Fortune brought this timely
appeal.
II
[1] The Lanham Act creates a comprehensive framework
for regulating the use of trademarks and protecting them
against infringement, dilution, and unfair competition. 15
U.S.C. § 1051 et seq. To prove infringement, a trademark
holder must show that the defendant’s use of its trademark “is
likely to cause confusion, or to cause mistake, or to deceive.”
15 U.S.C. § 1125(a)(1)-(a)(1)(A). Protecting against a likeli-
hood of confusion—what we have called the “core element of
trademark infringement,” Brookfield Commc’ns v. W. Coast
Entm’t Corp., 174 F.3d 1036, 1053 (9th Cir. 1999) (quotation
marks omitted)—comports with the underlying purposes of
trademark law: “[1] ensuring that owners of trademarks can
benefit from the goodwill associated with their marks and [2]
that consumers can distinguish among competing producers.”
Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 901 (9th
Cir. 2002).
[2] Eight factors, sometimes referred to as the Sleekcraft
factors, guide the inquiry into whether a defendant’s use of a
mark is likely to confuse consumers: (1) the similarity of the
marks; (2) the strength of the plaintiff’s mark; (3) the proxim-
ity or relatedness of the goods or services; (4) the defendant’s
intent in selecting the mark; (5) evidence of actual confusion;
(6) the marketing channels used; (7) the likelihood of expan-
sion into other markets; and (8) the degree of care likely to be
exercised by purchasers of the defendant’s product. AMF Inc.
v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979).
This eight-factor analysis is “pliant,” illustrative rather than
exhaustive, and best understood as simply providing helpful
guideposts. Brookfield Commc’ns, 174 F.3d at 1054; see E &
12244 FORTUNE DYNAMIC v. VICTORIA’S SECRET
J Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th
Cir. 1992) (“This list of factors, while perhaps exhausting, is
neither exhaustive nor exclusive.”). The Sleekcraft factors are
not a scorecard, a bean-counter, or a checklist. Thane, 305
F.3d at 901. “Some factors are much more important than oth-
ers, and the relative importance of each individual factor will
be case-specific.” Brookfield Commc’ns, 174 F.3d at 1054.
The Lanham Act provides some affirmative defenses, see
15 U.S.C. § 1115(b), one of which allows an accused
infringer to avoid liability by showing that it has used the
plaintiff’s trademark “fairly,” id. § 1115(b)(4). To establish a
fair use defense, the defendant must show that it used the term
“fairly and in good faith only to describe [its] goods or ser-
vices.” Id. We have recognized a nominative fair use defense
and a classic fair use defense. Nominative fair use applies
“where a defendant has used the plaintiff’s mark to describe
the plaintiff’s product,” Cairns v. Franklin Mint Co., 292 F.3d
1139, 1151 (9th Cir. 2002) (emphasis added), whereas classic
fair use—the only defense at issue here—involves a defen-
dant’s use of a descriptive term “in its primary, descriptive
sense,” id. at 1150-51 (quotation marks omitted).
We review the district court’s grant of summary judgment
de novo, and must view the evidence in the light most favor-
able to Fortune. In re Caneva, 550 F.3d 755, 760 (9th Cir.
2008). Summary judgment is improper if there are “any genu-
ine issues of material fact”—facts which, “under the govern-
ing substantive law, could affect the outcome of the case.” Id.
(quotation marks and ellipses omitted). “A genuine issue of
material fact exists when the evidence is such that a reason-
able jury could return a verdict for the nonmoving party.” Id.
at 761 (quotation marks and ellipsis omitted).
III
This case is yet another example of the wisdom of the well-
established principle that “[b]ecause of the intensely factual
FORTUNE DYNAMIC v. VICTORIA’S SECRET 12245
nature of trademark disputes, summary judgment is generally
disfavored in the trademark arena.” Entrepreneur Media, 279
F.3d at 1140 (quotation marks omitted). We are far from cer-
tain that consumers were likely to be confused as to the
source of Victoria’s Secret’s pink tank top, but we are confi-
dent that the question is close enough that it should be
answered as a matter of fact by a jury, not as a matter of law
by a court. See Thane, 305 F.3d at 901 (“Likelihood of confu-
sion is a factual determination.”).
The same is true of Victoria’s Secret’s reliance on the Lan-
ham Act’s fair use defense. Although it is possible that Victo-
ria’s Secret used the term “Delicious” fairly—that is, in its
“primary, descriptive sense”—we think that a jury is better
positioned to make that determination. Cf. KP Permanent
Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596,
609 (9th Cir. 2005) (“KP Permanent II”) (noting that genuine
issues of material fact indicate that the fact finder should
determine whether the “defense of fair use has been estab-
lished”).
A
We begin with the Sleekcraft factors as a way of framing
our discussion. We are going to discuss each factor, but we
will devote most of our attention to the similarity of the
marks, the strength of Fortune’s mark, the proximity of the
goods, and the evidence of actual confusion.
1
[3] Although some of the Sleekcraft factors will not always
be helpful in assessing the likelihood of confusion, “the simi-
larity of the marks . . . has always been considered a critical
question in the likelihood-of-confusion analysis.” GoTo.com,
Inc. v. Walt Disney Co., 202 F.3d 1199, 1205 (9th Cir. 2000).
Three general principles help determine whether marks are
similar. First, “[s]imilarity is best adjudged by appearance,
12246 FORTUNE DYNAMIC v. VICTORIA’S SECRET
sound, and meaning.” Entrepreneur, 279 F.3d at 1144. Sec-
ond, the “marks must be considered in their entirety and as
they appear in the marketplace.” GoTo.com, 202 F.3d at 1206.
Third, “similarities are weighed more heavily than differ-
ences.” Id.
Victoria’s Secret makes two arguments against finding that
the marks are similar. First, Victoria’s Secret argues that its
use of “Delicious” “differed completely in font, color, size
and purpose from” Fortune’s mark. Second, Victoria’s Secret
says that it “is inconceivable that a customer inside a VICTO-
RIA’S SECRET retail store” could believe that the pink tank
top with “Delicious” written on it, which was surrounded by
BEAUTY RUSH product, could possibly have originated
with Fortune Dynamics.
[4] Victoria’s Secret is correct that the marks have mark-
edly different appearances. Fortune’s mark is written in black,
block letters on the inside heel of the shoe and on the shoe
box. Victoria’s Secret’s “Delicious,” by contrast, is written in
silver cursive lettering across the chest of a hot pink tank top.
On the other hand, there are substantial similarities between
the marks. First, there is the obvious: the marks sound the
same and look similar because they are the same word, “deli-
cious.” Moreover, in each case the word “delicious” appears
alone, and not adjacent to any other word or symbol. And
there is reason to think that they share the same meaning, as
they are attached to items of clothing and appear to evoke
desirability and pleasure.
[5] Victoria’s Secret’s second argument is also not without
force. It does seem unlikely that a knowledgeable consumer
would believe that Fortune, which markets its shoes in a num-
ber of different retail outlets, would be selling a tank top in
a Victoria’s Secret store. The record reveals, however, evi-
dence of individuals (including pop star Brittney Spears)
wearing Victoria’s Secret’s “Delicious” pink tank top on the
street. This evidence suggests the possibility of post-purchase
FORTUNE DYNAMIC v. VICTORIA’S SECRET 12247
confusion, which, we have held, “can establish the required
likelihood of confusion under the Lanham Act.” Karl Storz
Endoscopy Am., Inc. v. Surgical Tech., Inc., 285 F.3d 848,
854 (9th Cir. 2002); see Levi Strauss & Co. v. Blue Bell, Inc.,
632 F.2d 817, 822 (9th Cir. 1980). In such instances, at least,
when knowledgeable consumers see the “Delicious” tank top
outside Victoria’s Secret stores, it seems at least plausible that
they could be confused as to who produced the tank top.
[6] Thus, in light of the principle that “similarities
[between marks] are weighed more heavily than differences”
and our recognition of post-purchase confusion, a jury could
reasonably conclude that the “similarity of marks” factor
weighs in favor of Fortune.
2
We turn next to the strength of Fortune’s DELICIOUS
mark. As a general matter, “[t]he more likely a mark is to be
remembered and associated in the public mind with the
mark’s owner, the greater protection the mark is accorded by
trademark laws.” GoTo.com, 202 F.3d at 1207. A mark’s
strength is evaluated conceptually and commercially. Id.
[7] A mark’s conceptual strength depends largely on the
obviousness of its connection to the good or service to which
it refers. The less obvious the connection, the stronger the
mark, and vice versa. Using a list originally formulated by
Judge Friendly, see Abercrombie & Fitch Co. v. Hunting
World, Inc., 537 F.2d 4, 9 (2d Cir. 1976), marks are placed
in one of five categories, ranging from weakest to strongest:
generic, descriptive, suggestive, arbitrary, and fanciful,
GoTo.com, 202 F.3d at 1207. At one end of the spectrum,
generic marks “refer[ ] to the genus of which the particular
product is a species,” such as “bread” or “door,” and “are not
registerable” as trademarks. Park ‘N Fly, Inc. v. Dollar Park
& Fly, Inc., 469 U.S. 189, 194 (1985). At the other end of the
spectrum are arbitrary marks—actual words with no connec-
12248 FORTUNE DYNAMIC v. VICTORIA’S SECRET
tion to the product—such as Apple computers and Camel cig-
arettes, and fanciful marks—made-up words with no
discernable meaning—such as Kodak film and Sony electron-
ics that are inherently distinctive and therefore receive “maxi-
mum trademark protection.” Entrepreneur, 279 F.3d at 1141.
In the middle are descriptive marks, which “describe[ ] the
qualities or characteristics of a good or service” and only
receive protection if they acquire secondary meaning, Park ‘N
Fly, 469 U.S. at 194, and suggestive marks, which require a
consumer to “use imagination or any type of multistage rea-
soning to understand the mark’s significance” and automati-
cally receive protection, Zobmondo Entm’t, LLC v. Falls
Media, LLC, 602 F.3d 1108, 1114 (9th Cir. 2010) (quotation
marks omitted).
Categorizing trademarks is necessarily an imperfect sci-
ence. Far from being neatly distinct and discrete, trademark
categories often “blur at the edges and merge together.”
Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786,
790 (5th Cir. 1983), overruled in part by KP Permanent
Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111,
116 (2004) (“KP Permanent I”). “The labels are more advi-
sory than definitional, more like guidelines than pigeonholes.
Not surprisingly, they are somewhat difficult to articulate and
to apply.” Id.; see also Abercrombie, 537 F.2d at 9 (“The lines
of demarcation . . . are not . . . always bright.”). The line
between descriptive and suggestive marks is nearly incapable
of precise description. Lahoti v. Vericheck, Inc., 586 F.3d
1190, 1197 (9th Cir. 2009) (“[L]egions of trademark lawyers
can stay busy arguing about how marks in the middle, not so
plainly descriptive, nor so plainly [suggestive], should be cat-
egorized.”).
[8] “A suitable starting place” for attempting to draw the
line between a suggestive and a descriptive mark “is the dic-
tionary.” Zatarains, 698 F.2d at 792; see also Surgicenters of
Am., Inc. v. Med. Dental Surgeries, Co., 601 F.2d 1011, 1015
n.11 (9th Cir. 1979) (“While not determinative, dictionary
FORTUNE DYNAMIC v. VICTORIA’S SECRET 12249
definitions are relevant and often persuasive in determining
how a term is understood by the consuming public . . . .”).
With that in mind, two tests help distinguish between a
descriptive and a suggestive mark. First, a mark is more likely
suggestive if it passes the imagination test, which asks
whether the mark “requires a mental leap from the mark to the
product.” Brookfield Commc’ns, 174 F.3d at 1058; see also 2
J. MCCARTHY, TRADEMARKS AND UNFAIR COMPETITION § 11:71
(4th ed. 2004) (“MCCARTHY”) (“Is some reflection or multi-
stage reasoning process necessary to cull some direct informa-
tion about the product from the term used as a mark?”).
“[T]he imagination test is [the] primary criterion for evaluat-
ing” whether a mark is suggestive. Zobmondo, 602 F.3d at
1116 (quotation marks omitted). Second, a mark is more
likely suggestive if it passes the competitor test, which asks
whether “the suggestion made by the mark is so remote and
subtle that it is really not likely to be needed by competitive
sellers to describe their goods.” Id. at 1117 (quotation marks
omitted); MCCARTHY § 11:68.
“Delicious” carries several different meanings, including
“affording great pleasure,” “appealing to one of the bodily
senses . . . esp[ecially] involving the sense of taste or smell,”
“delightfully amusing,” and—in a definition the dictionary
itself calls “obsolete”—”characterized by . . . self-indulgent or
sensuous pleasure.” WEBSTER’S THIRD NEW INTERNATIONAL
DICTIONARY 597 (1993). It “commonly refers to that which is
tasted, smelled, or otherwise savored with maximum pleasure
and keenest appreciation.” Id.
[9] We think that there is a genuine issue of material fact
as to whether Fortune’s DELICIOUS mark is suggestive or
descriptive. The distinction is important here because if the
mark is suggestive, there is a stronger likelihood that a jury
could reasonably conclude that the “strength of the mark” fac-
tor favors Fortune. On the one hand, some evidence points to
a finding that DELICIOUS as applied to footwear is merely
descriptive. To the extent “delicious” means “affording great
12250 FORTUNE DYNAMIC v. VICTORIA’S SECRET
pleasure,” for example, it seems to “directly convey a real and
unequivocal idea of some characteristic, function, quality or
ingredient of the product or service.” MCCARTHY § 11:71. By
that definition, DELICIOUS on footwear is nothing more than
“self-laudatory advertising,” a factor that cuts against catego-
rizing the mark as suggestive. Id.; see Zobmondo, 602 F.3d at
1116 (“[M]erely descriptive marks need not describe the
essential nature of a product; it is enough that the mark
describe some aspect of the product.” (quotation marks omit-
ted)). On the other hand, a reasonable jury, viewing the evi-
dence in the light most favorable to Fortune, might focus
more on the “taste” and “smell” definitions of “delicious.” In
that event, the connection between DELICIOUS and footwear
becomes much more attenuated, indicating that the mark is
suggestive because it “requires a mental leap from the mark
to the product.” Brookfield Commc’ns, 174 F.3d at 1058. In
contrast with food, to which this definition of “delicious” has
a direct connection, one arguably must use some imagination
—a “multi-stage reasoning process”—to get from “delicious”
to footwear. MCCARTHY § 11:71. “Delicious” is not a descrip-
tor the average consumer would associate with shoes.
[10] For the same reasons, other shoe companies are
unlikely to need to rely on the word “delicious” to describe
their goods. Indeed, we are aware of no other shoe companies,
and Victoria’s Secret points to none, that use the word “deli-
cious” to describe their product. See Zobmondo, 602 F.3d at
1117-18. In sum, because “[w]hich category a mark belongs
in is a question of fact,” id. at 1113, and because the decision
as to whether a mark is descriptive or suggestive “ ‘is fre-
quently made on an intuitive basis rather than as a result of
a logical analysis susceptible of articulation,’ ” Lahoti, 586
F.3d at 1197-98 (quoting Pizzeria Uno Corp. v. Temple, 747
F.2d 1522, 1528 (4th Cir. 1984)), we think a jury should
assess the conceptual strength of Fortune’s mark in the first
instance.
Fortune also presented evidence of the DELICIOUS mark’s
commercial strength, which takes into account a mark’s “ac-
FORTUNE DYNAMIC v. VICTORIA’S SECRET 12251
tual marketplace recognition.” Brookfield Commcn’s, 174
F.3d at 1058. Although we have said that a suggestive mark
is a “comparatively weak mark,” Sleekcraft, 599 F.2d at 349,
we have also noted that “advertising expenditures can trans-
form a suggestive mark into a strong mark,” Brookfield Com-
mcn’s, 174 F.3d at 1058. Here, Fortune proffered evidence
indicating that it spends approximately $350,000 yearly mar-
keting its footwear and that it sold 12,000,000 pairs of DELI-
CIOUS shoes from 2005 to 2007. In addition, Fortune has
advertised its DELICIOUS footwear in a variety of popular
magazines, including Cosmo girl, Elle girl, Teen People,
Twist, In Touch, Seventeen, Latina, ym, Shop, CB, marie
claire, and Life & Style. Whatever its ultimate force, this evi-
dence is sufficient to make the relative commercial strength
of the DELICIOUS mark a question for the jury.
3
[11] A genuine issue of material fact also exists, under the
“proximity of goods” factor, with respect to whether For-
tune’s footwear and Victoria’s Secret’s tank top are related.
“Where goods are related or complementary, the danger of
consumer confusion is heightened.” E & J Gallo Winery, 967
F.2d at 1291. In addressing this factor, our “focus is on
whether the consuming public is likely somehow to associate
[Fortune’s DELICIOUS footwear] with [Victoria’s Secret’s
tank top].” Brookfield Commc’ns, 174 F.3d at 1056; see also
Recot, Inc. v. Becton, 214 F.3d 1322, 1329 (Fed. Cir. 2000)
(noting that the relevant question is whether the “goods can
be related in the mind of the consuming public as to the origin
of the goods”).
[12] Victoria’s Secret contends that the fact that “two
goods are used together . . . does not, in itself, justify a finding
of relatedness.” Shen Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d
1238, 1244 (Fed. Cir. 2004). We have no objection to that
general proposition, but the products at issue in Shen did not
have the same relationship as the products at issue here. The
12252 FORTUNE DYNAMIC v. VICTORIA’S SECRET
court in Shen was comparing “cooking classes” and “kitchen
textiles,” which, the court held, the “consuming public” was
unlikely to “perceive . . . as originating from the same source”
because “one is a service [and] the other . . . a tangible good.”
Id. at 1245. Here, by contrast, both of the products at issue—
female footwear and a female tank top—are “tangible goods”
and are targeted to the same consumers: young women.
Indeed, the products are complementary. See, e.g., Avon Shoe
Co. v. David Crystal, Inc., 279 F.2d 607, 612 (2d Cir. 1960)
(noting that shoes and apparel are goods “which serve both
common functions and common purchasers”). Given the intu-
itively close relationship between women’s shoes and apparel
in the minds of the consuming public, a jury could reasonably
conclude that the “proximity of the goods” factor favors For-
tune.
4
Not surprisingly, evidence of actual confusion can also sup-
port a finding of likelihood of confusion. Perhaps “[b]ecause
of the difficulty in garnering such evidence,” Sleekcraft, 599
F.2d at 353, we have held that “[s]urvey evidence may estab-
lish actual confusion,” Thane, 305 F.3d at 902. Here, the dis-
trict court refused to admit a survey conducted by Howard
Marylander showing that consumers were actually confused
by Victoria’s Secret’s use of the word “Delicious” on its pro-
motional tank top.
Rule 702 states that “[i]f scientific, technical, or other spe-
cialized knowledge will assist the trier of fact to understand
the evidence . . . a witness qualified as an expert by knowl-
edge, skill, experience, training, or education, may testify
thereto in the form of an opinion.” FED. R. EVID. 702. Rule
702 imposes a “basic gatekeeping obligation” on district
courts to “ensure that any and all scientific testimony”—
including testimony based on “technical[ ] or other special-
ized knowledge”—“is not only relevant, but reliable.” Kumho
Tire Co. v. Carmichael, 526 U.S. 137, 147 (1999) (quotation
FORTUNE DYNAMIC v. VICTORIA’S SECRET 12253
marks omitted). The district court must ensure that expert tes-
timony, whether it is based on “professional studies or per-
sonal experience, employs in the courtroom the same level of
intellectual rigor that characterizes the practice of an expert in
the relevant field.” Id. at 152. We review a district court’s
decision to exclude expert evidence for abuse of discretion.
See Gen. Elec. Co. v. Joiner, 522 U.S. 136, 138-39 (1997).
[13] A district court abuses its discretion if it “base[s] its
decision[ ] on an erroneous legal standard.” Stormans, Inc. v.
Selecky, 586 F.3d 1109, 1119 (9th Cir. 2009) (quotation
marks omitted). We have long held that survey evidence
should be admitted “as long as [it is] conducted according to
accepted principles and [is] relevant.” Wendt v. Host Int’l,
Inc., 125 F.3d 806, 814 (9th Cir. 1997); see Clicks Billiards,
Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1263 (9th Cir. 2001);
Southland Sod Farms v. Stover Seed Co., 108 F.3d 1134,
1143 (9th Cir. 1997); E & J Gallo Winery, 967 F.2d at 1292;
Keith v. Volpe, 858 F.2d 467, 480 (9th Cir. 1988). Further-
more, we have made clear that “technical inadequacies” in a
survey, “including the format of the questions or the manner
in which it was taken, bear on the weight of the evidence, not
its admissibility.” Keith, 858 F.2d at 480; see Wendt, 125 F.3d
at 814 (“Challenges to survey methodology go to the weight
given the survey, not its admissibility.”).
Howard Marylander, who holds an M.B.A. in marketing
from the University of Southern California, has been retained
in forty-five cases to conduct a survey to determine the likeli-
hood of confusion as to the source of goods or services. Here,
Marylander conducted an on-line survey among young
women ages fifteen to twenty-four to determine the likelihood
of confusion between Fortune’s DELICIOUS footwear and
Victoria’s Secret’s tank top. The survey was conducted online
using an e-Rewards panel consisting of 211,000 members,
ages thirteen to twenty-five. Most survey participants met two
criteria: in the past six months they had purchased shoes and
a tank top or in the next six months they planned to purchase
12254 FORTUNE DYNAMIC v. VICTORIA’S SECRET
shoes and a tank top. Participants were excluded if anyone in
their household worked in the advertising industry.
Marylander divided the respondents into a test group and a
control group, each composed of 300 members. The members
of the test group were exposed to pictures of Fortune’s DELI-
CIOUS shoes and Victoria’s Secret’s “Delicious” tank top,
one at a time and in rotated order. They were then asked a
series of questions about whether they thought the two marks
come from the same company, related companies, or they did
not know. The same protocol was followed with the control
group, of which there were also 300 members, except that
instead of the word “Delicious” on the tank top, one-third of
the control group saw the word “Beautiful,” one-third saw
“Fabulous,” and one-third saw “Incredible.”
Of those in the test group, 46% believed that the DELI-
CIOUS shoes and the “Delicious” tank top came from the
same company. An additional 8% thought that the companies
that created the shoes and the tank top were related or associ-
ated. In the control group, 18% thought the products came
from the same company, and 25% thought the companies
were related or associated. Marylander concluded that 54% of
the test group (46 + 8) confused the products, as compared to
only 43% (18 + 25) in the control group, and that the differ-
ence was statistically significant.
According to Marylander, the survey results strongly sug-
gested that there was a likelihood of confusion among con-
sumers between Fortune’s DELICIOUS shoes and Victoria
Secret’s “Delicious” tank top. He based this conclusion on
three principal factors: (1) the disparity between the amount
of confusion in the test group and the control group (11%);
(2) the unusually high disparity between those who believed
the products came from the same company (28%); and (3) the
fact that the disparity in confusion levels would have been
higher if respondents had not seen “beauty rush” in the back
FORTUNE DYNAMIC v. VICTORIA’S SECRET 12255
collar, as was the case for those consumers who only saw the
tank top on models or mannequins.
[14] The district court excluded the Marylander survey
because the survey compared the products side-by-side, failed
to replicate real world conditions, failed to properly screen
participants, and was “highly suggestive.” The district court
supported most of its reasoning by reference to unpublished
district court decisions, only one of which even falls within
the Ninth Circuit. The court’s one citation to Ninth Circuit
precedent, moreover, is not helpful. In support of its conclu-
sion that the survey should not have compared the products
“side-by-side,” the district court cited our decision in Levi
Strauss & Co. v. Blue Bell, Inc., 632 F.2d 817 (9th Cir. 1980),
in which we noted that “[i]t is axiomatic in trademark law that
‘side-by-side’ comparison is not the test.” Id. at 822. But that
statement, far from setting forth a standard for admitting sur-
vey evidence, merely provided support for our recognition of
the possibility of post-sale confusion. See id. at 822
(“Wrangler’s use of its projecting label is likely to cause con-
fusion among prospective purchasers who carry even an
imperfect recollection of Strauss’s mark and who observe
Wrangler’s projecting label after the point of sale. It is axiom-
atic in trademark law that ‘side-by-side’ comparison is not the
test.” (emphasis added)). Indeed, the question of the admissi-
bility of survey evidence nowhere surfaced in Levi Strauss.
What makes the district court’s misuse of Levi Strauss even
more glaring is its failure to mention even one of the numer-
ous cases in which we have held that survey evidence should
be admitted “as long as [it is] conducted according to
accepted principles and [is] relevant.” Wendt, 125 F.3d at 814.
In sum, we conclude that the district court abused its discre-
tion in excluding the survey because Marylander appears to
have conducted the survey in accordance with accepted prin-
ciples, and because the results of the survey are relevant to the
ultimate question whether Victoria’s Secret’s use of “Deli-
cious” was likely to confuse consumers.
12256 FORTUNE DYNAMIC v. VICTORIA’S SECRET
By way of comparison, we approved of a similar survey in
Thane. There, the expert conducting the survey selected 400
people over the age of 18 who had purchased a bike in the last
three years or planned to purchase one within the next year.
See Thane, 305 F.3d at 902. These bike enthusiasts were
interviewed in shopping malls throughout the country. Three
hundred of the respondents were shown pictures of Trek prod-
ucts and OrbiTrek products and asked questions about the
companies’ association. The remaining 100, the control
group, were shown the same Trek pictures, but saw pictures
from Yukon, a third company, instead of from OrbiTrek. Id.
at 902 n.6. The principles applied in the Marylander survey
are virtually indistinguishable. Three hundred respondents
were asked to compare pictures of DELICIOUS shoes and the
“Delicious” tank top, and then to answer questions about the
companies that produced them. A different group of 300
respondents were shown slightly different pictures and asked
the same questions. Marylander then tabulated the results to
come to a conclusion regarding the likelihood of confusion.
[15] To be sure, as Victoria’s Secret argues and as the dis-
trict court noted, the Marylander survey has a number of
shortcomings, including the fact that it was conducted over
the internet (thereby failing to replicate real world condi-
tions), may have been suggestive, and quite possibly produced
counterintuitive results. But these criticisms, valid as they
may be, go to “issues of methodology, survey design, reliabil-
ity, . . . [and] critique of conclusions,” and therefore “go to the
weight of the survey rather than its admissibility.” Clicks Bil-
liards, 251 F.3d at 1263; cf. Daubert v. Merrell Dow Pharms.,
Inc., 509 U.S. 579, 596 (1993) (“Vigorous cross-examination,
presentation of contrary evidence, and careful instruction on
the burden of proof are the traditional and appropriate means
of attacking shaky but admissible evidence.”). Viewing the
survey in the light most favorable to Fortune, as we must, we
conclude that the survey creates a genuine issue of material
fact as to whether consumers were confused by Victoria’s
Secret’s use of “Delicious.”
FORTUNE DYNAMIC v. VICTORIA’S SECRET 12257
5
[16] The next Sleekcraft factor focuses our attention on the
relative sophistication of the relevant consumer, and the
degree of care likely to be exercised by that consumer. The
reference point for this factor “is the typical buyer exercising
ordinary caution.” Sleekcraft, 599 F.2d at 353. As we
explained in Sleekcraft, this “standard includes the ignorant
and the credulous.” Id. “We expect” the typical buyer “to be
more discerning—and less easily confused—when he is pur-
chasing expensive items.” Brookfield Commc’ns, 174 F.3d at
1060. “On the other hand, when dealing with inexpensive
products, customers are likely to exercise less care, thus mak-
ing confusion more likely.” Id.
The parties vigorously contest the relative sophistication of
the young women purchasing their products. Victoria’s Secret
argues that “[p]urchasers of apparel are considered . . . sophis-
ticated consumers.” For support, Victoria’s Secret points to
one court’s observation that “fashion-conscious” young
women “are likely to exercise a significant degree of care in
purchasing their clothing, since the name of the particular
designer is important in the fashion world.” Kookai, S.A. v.
Shabo, 950 F. Supp. 605, 609 (S.D.N.Y. 1997). On the other
hand, as Fortune points out, we have noted the absence of a
“clear standard . . . for analyzing moderately priced goods,
such as non-designer clothing.” Surfvivor Media, Inc. v. Sur-
vivor Prods., 406 F.3d 625, 634 (9th Cir. 2005). And a well-
respected commentator on trademark law has questioned “the
wisdom of . . . sweeping judicial observation[s] about relative
sophisticated buying habits based on gender.” MCCARTHY
§ 23:99.
[17] We cannot determine with any degree of confidence
the relative sophistication of the parties’ consumers. Nor are
we confident of the implications of finding that the consumers
are sophisticated. We think it possible that a discerning con-
sumer might immediately connect the like-named products
12258 FORTUNE DYNAMIC v. VICTORIA’S SECRET
more readily than an unsophisticated consumer. Whoever’s
right, the difficulty of trying to determine with any degree of
confidence the level of sophistication of young women shop-
ping at Victoria’s Secret only confirms the need for this case
to be heard by a jury.
6
There are also genuine issues of material fact with respect
to the remaining factors (marketing channels, likelihood of
expansion, and Victoria’s Secret’s intent). We recognize that
some evidence related to these factors supports Victoria’s
Secret. For instance, the fact that Fortune is exclusively a
wholesaler that sells its shoes to a number of authorized retail
outlets, while Victoria’s Secret is primarily a retailer, operat-
ing approximately 900 retail stores nationwide under its own
name, cuts against Fortune. As for the likelihood of expan-
sion, Fortune has entered a licensing agreement with Chaz to
use the DELICIOUS mark on clothing, but there is no indica-
tion that Chaz has begun using the license and Victoria’s
Secret no longer creates any clothing with the word “Deli-
cious” on it. Finally, aside from the fact that Victoria’s Secret
failed to investigate the possibility that DELICIOUS was
being used as a mark before promoting its tank top, there is
little evidence that Victoria’s Secret intended to trade on For-
tune’s goodwill.
[18] Nonetheless, “[l]ikelihood of confusion is a factual
determination,” and “district courts should grant summary
judgment motions regarding the likelihood of confusion spar-
ingly.” Thane, 305 F.3d at 901-02. Granting summary judg-
ment in cases in which a majority of the Sleekcraft factors
could tip in either direction is inconsistent with that principle.
Because “a jury could reasonably conclude that most of the
[Sleekcraft] factors weigh in [Fortune’s] favor,” Wendt, 125
F.3d at 812; see KP Permanent II, 408 F.3d at 608, the district
court erred in granting Victoria’s Secret’s motion for sum-
mary judgment on the question of likelihood of confusion.
FORTUNE DYNAMIC v. VICTORIA’S SECRET 12259
B
[19] We next turn to Victoria’s Secret’s argument that its
use of the word “Delicious” was protected by the Lanham
Act’s fair use defense. 15 U.S.C. § 1115(b)(4). Long before
the Lanham Act was enacted, the Supreme Court explained
that “[t]he use of a similar name by another to truthfully
describe his own product does not constitute a legal or moral
wrong, even if its effect be to cause the public to mistake the
origin . . . of the product.” William R. Warner & Co. v. Eli
Lilly & Co., 265 U.S. 526, 529 (1924). Congress codified this
common law principle in the Lanham Act’s fair use defense,
which allows a party to use a descriptive word “otherwise
than as a mark . . . [and] fairly and in good faith only to
describe the goods or services of such party, or their geo-
graphic origin.” 15 U.S.C. § 1115(b)(4). In establishing that
its use was fair, the defendant is not required to “negate con-
fusion.” KP Permanent I, 543 U.S. at 118. This is because,
although the Lanham Act is less than clear on the subject, the
Supreme Court recently clarified that, consistent with Eli
Lilly, “some possibility of consumer confusion must be com-
patible with fair use.” Id. at 121. Finally, Victoria’s Secret’s
subjective good faith is relevant to the inquiry, but the overall
analysis focuses on whether Victoria’s Secret’s use of “Deli-
cious” was “objectively fair.” Id. at 123.
The fair use defense stems from the “undesirability of
allowing anyone to obtain a complete monopoly on use of a
descriptive term simply by grabbing it first.” Id. at 122; see
Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189,
200 (1985) (noting that the Lanham Act was not intended to
“create an exclusive right to use language that is descriptive
of a product”). To avoid monopolization, a company such as
Victoria’s Secret may invoke a trademark term in its descrip-
tive sense “regardless of [the mark’s] classification as descrip-
tive, suggestive, arbitrary, or fanciful.” Brother Records, Inc.
v. Jardine, 318 F.3d 900, 907 (9th Cir. 2003). In other words,
how Fortune’s DELICIOUS mark is categorized as a matter
12260 FORTUNE DYNAMIC v. VICTORIA’S SECRET
of conceptual strength has no bearing on whether Victoria’s
Secret is entitled to the fair use defense.
According to Victoria’s Secret, it should prevail on the fair
use defense because, as the Lanham Act provides, it used the
term “Delicious” “otherwise than as a mark,” “only to
describe [its] goods or services,” and “in good faith.” 15
U.S.C. § 1115(b)(4). We think there is some merit to Victo-
ria’s Secret’s argument, but ultimately conclude that the ques-
tion of “fair use,” like the question of likelihood of confusion,
should be resolved by a jury. We consider each of the “fair
use” factors in turn.
1
[20] We first consider whether the district court correctly
ruled, as a matter of law, that Victoria’s Secret used “Deli-
cious” “otherwise than as a mark.” 15 U.S.C. § 1115(b)(4).
The Lanham Act defines a trademark as something used “to
identify and distinguish . . . goods . . . and to indicate the
source of the goods.” Id. § 1127. To determine whether a term
is being used as a mark, we look for indications that the term
is being used to “associate it with a manufacturer.” Sierra On-
Line, Inc. v. Phoenix Software, Inc., 739 F.2d 1415, 1423 (9th
Cir. 1984). Indications of trademark use include whether the
term is used as a “symbol to attract public attention,” JA
Apparel Corp. v. Abboud, 568 F.3d 390, 400 (2d Cir. 2009),
which can be demonstrated by “the lettering, type style, size
and visual placement and prominence of the challenged
words,” MCCARTHY § 11:46. Another indication of trademark
use is whether the allegedly infringing user undertook “pre-
cautionary measures such as labeling or other devices
designed to minimize the risk that the term will be understood
in its trademark sense.” RESTATEMENT (THIRD) OF
UNFAIR COMPETITION § 28 cmt. c (1995) (“RESTATEMENT”); see
also Packman v. Chicago Tribune Co., 267 F.3d 628, 639 (7th
Cir. 2001) (noting, in finding fair use, that the newspaper’s
FORTUNE DYNAMIC v. VICTORIA’S SECRET 12261
“joy of six” t-shirt “plainly indicat[ed] the Tribune as the
source”).
[21] Here, there is evidence from which a reasonable jury
could conclude that Victoria’s Secret was using “Delicious”
as a trademark. “Delicious” was written in large letters, with
a capital “D,” and in silver typescript across the chest, sug-
gesting that Victoria’s Secret used the word to attract public
attention. Further, there is little evidence that Victoria’s Secret
employed “precautionary measures” to avoid confusion with
Fortune’s mark. It is true that the word “yum” appeared on the
back of the tank top and “beauty rush” appeared in its back
collar. But a jury could reasonably conclude that those hard-
to-find words did not detract from the overall message broad-
cast loudly on the front of the shirt, “Delicious.” Perhaps most
important, Victoria’s Secret’s used “Delicious” in a remark-
ably similar way to how it uses two of its own trademarks —
PINK and VERY SEXY. PINK is written in bold capital let-
ters on different items of Victoria’s Secret clothing, while
VERY SEXY was written, in hot pink crystals, across the
chest of a similar black-ribbed tank top during a very similar
promotion. The fact that Victoria’s Secret used “Delicious” in
the same way that it uses other Victoria’s Secret trademarks
could be persuasive evidence to a jury that Victoria’s Secret
used, or at least intended to establish, “Delicious” as a trade-
mark.
In support of its argument that Victoria’s Secret used “Deli-
cious” as a trademark, Fortune attempted to introduce the tes-
timony of expert Dean K. Feuroghne, a forty-year advertising
and marketing professional, who would have testified that
Victoria’s Secret used “Delicious” as a trademark. We think
the district court acted within its discretion to exclude this
portion of Fueroghne’s testimony.4 The basis of his knowl-
edge regarding trademark use is not entirely clear. More
4
The other portion of Fueroghne’s proffered testimony is discussed
below.
12262 FORTUNE DYNAMIC v. VICTORIA’S SECRET
important, Fueroghne’s opinion does not “assist” the jury
because the jury is well equipped “ ‘to determine intelligently
and to the best possible degree’ ” the issue of trademark usage
“ ‘without enlightenment from those having a specialized
understanding of the subject involved in the dispute.’ ” FED.
R. EVID. 702 advisory committee’s note (quoting Mason
Ladd, Expert Testimony, 5 VAND. L. REV. 414, 418 (1952)).
Even though we agree that this portion of Fueroghne’s prof-
fered testimony was properly excluded, we believe that there
still remains a genuine issue of material fact as to whether
Victoria’s Secret used “Delicious” as a trademark.
2
[22] A genuine issue of material fact also remains with
respect to whether Victoria’s Secret used the word “Deli-
cious” “only to describe [its] goods or services.” 15 U.S.C.
§ 1115(b)(4). To prevail on this factor, we have held, a defen-
dant must establish that it used the word “in [its] primary,
descriptive sense” or “primary descriptive meaning.” Brother
Records, 318 F.3d at 906. As a practical matter, “it is some-
times difficult to tell what factors must be considered to deter-
mine whether a use . . . is descriptive.” EMI Catalogue P’ship
v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 64
(2d Cir. 2000). We agree with the Restatement, however, that
the scope of the fair use defense varies with what we will call
the descriptive purity of the defendant’s use and whether there
are other words available to do the describing. See
RESTATEMENT § 28, cmt. c.
Victoria’s Secret makes two points—one factual and one
legal—in support of its argument that it used “Delicious”
descriptively. As to facts, Victoria’s Secret says that it used
“Delicious” merely to “describe the flavorful attributes of
Victoria’s Secret’s BEAUTY RUSH lip gloss and other prod-
ucts that feature the same popular fruit flavors.” A jury, how-
ever, could reasonably conclude otherwise. For one thing, in
its advertisements, Victoria’s Secret described its BEAUTY
FORTUNE DYNAMIC v. VICTORIA’S SECRET 12263
RUSH lip gloss as “deliciously sexy,” not delicious. For
another, Victoria’s Secret’s executives testified that they
wanted “Delicious” to serve as a “playful self-descriptor,” as
if the wearer of the pink tank top is saying, “I’m delicious.”
These examples suggest that a jury could reasonably decide
that Victoria’s Secret did not use “Delicious” “only to
describe its goods.” See RESTATEMENT § 28, cmt. c. (“If the
original meaning of the term is not in fact descriptive of the
attributes of the user’s goods, services, or business, the [fair
use] defense is not applicable.”).
As to law, Victoria’s Secret argues that it used “Delicious”
in a permissible “descriptive sense,” even if its use of the
word was not technically descriptive. Victoria’s Secret points
to the Second Circuit’s decision in Cosmetically Sealed Indus-
tries, Inc. v. Chesebrough-Pond’s USA Co., 125 F.3d 28 (2d
Cir. 1997), in which the court noted that the statutory require-
ment that a defendant use the term “only to describe [its]
goods or services” “has not been narrowly confined to words
that describe a characteristic of the goods, such as size or
quality.” Id. at 30. Instead, that court observed, “the phrase
permits use of words or images that are used . . . in their
‘descriptive sense.’ ” Id. Under that standard, the court held
that although the defendants’ use of the phrase “Seal it With
a Kiss” “d[id] not describe a characteristic of the defendants’
product,” it was used in its “ ‘descriptive sense’—to describe
an action that the sellers hope consumers will take, using their
product.” Id. Other Second Circuit cases have followed the
same general approach. See Car-Freshner Corp. v. S.C. John-
son & Son, Inc., 70 F.3d 267, 270 (2d Cir. 1995) (concluding
that the defendant had established fair use because its “pine-
tree shape” air freshener “describes . . . the pine scent” and
“refers to the Christmas season, during which Johnson sells
th[e] item”); B&L Sales Assocs. v. H. Daroff & Sons, Inc.,
421 F.2d 352, 353 (2d Cir. 1970) (upholding the defendant’s
use of the phrase “Come on Strong” because it “describe[d]
the manner in which [the] clothing would assist the purchaser
in projecting a commanding, confident, ‘strong’ image to his
12264 FORTUNE DYNAMIC v. VICTORIA’S SECRET
friends and admirers”). But see EMI, 228 F.3d at 65 (holding
that, although the word “Swing” “undoubtedly describes both
the action of using a golf club and the style of music on the
soundtrack,” “Swing, Swing, Swing [wa]s not necessarily
[descriptive]”).
We have no quarrel with the general proposition that the
fair use defense may include use of a term or phrase in its
“descriptive sense,” which in some instances will describe
more than just “a characteristic of the [defendant’s] goods.”
MCCARTHY § 11:49; see Brother Records, 318 F.3d at 907.
We also agree that a capacious view of what counts as
descriptive supports Victoria’s Secret’s argument that its use
of “Delicious” qualifies as fair use. Even under this view of
whether a use counts as descriptive, however, we think that a
jury could reasonably conclude that Victoria’s Secret’s use
was not fair under this factor, for three reasons.
[23] First, although we accept some flexibility in what
counts as descriptive, we reiterate that the scope of the fair
use defense varies with the level of descriptive purity. Thus,
as a defendant’s use of a term becomes less and less purely
descriptive, its chances of prevailing on the fair use defense
become less and less likely. See RESTATEMENT § 28, cmt. c.
And here, a jury could reasonably conclude, for the same rea-
sons it might conclude that DELICIOUS as applied to foot-
wear is not descriptive, see supra Part III.A.2, that Victoria’s
Secret’s use of “Delicious” on a pink tank top did not qualify
as sufficiently descriptive for Victoria’s Secret to prevail on
the fair use defense.
[24] Second, even if a jury thought that there was some
evidence of descriptive use, it could still reasonably conclude
that the lack of “precautionary measures” on Victoria’s
Secret’s pink tank top outweighs that evidence. Indeed, the
same Second Circuit decisions upon which Victoria’s Secret
relies support this view. In Cosmetically Sealed, for example,
“[t]he product name ‘Color Splash’ ”—the defendant’s
FORTUNE DYNAMIC v. VICTORIA’S SECRET 12265
trademark—“appeared in the center of the display in red
block letters, at least twice the size of the lettering for ‘Seal
it with a Kiss.’ ” 125 F.3d at 29-30. And “the brand name
‘CUTEX’ [appeared] in block letters three times the size of
the ‘Seal it’ instruction.” Id. at 30. B&L Sales describes a sim-
ilar layout: “Directly below this phrase [‘Come on Strong’],
in somewhat smaller, yet readily visible, block-type print
appears the phrase ‘With Botany 500.’ Thus the copy reads
‘COME ON STRONG with Botany 500.’ ” 421 F.2d at 353.
Here, by contrast, the word “Delicious” appeared all by itself
on the front of a tank top. Even though other words, such as
“beauty rush” and “yum yum,” appeared elsewhere on the
top, a jury could reasonably conclude that in order to prevail
on the fair use defense, Victoria’s Secret should have been
more careful about “indicating [Victoria’s Secret] as the
source.” Packman, 267 F.3d at 639.
[25] Finally, there is little doubt that Victoria’s Secret had
at its disposal a number of alternative words that could ade-
quately capture its goal of providing a “playful self-
descriptor” on the front of its tank top. An abundance of alter-
native words is important because it suggests that Victoria’s
Secret’s use was more suggestive than descriptive. See
MCCARTHY § 11:45 (“[T]o be eligible for . . . fair use, [a]
defendant must be using the challenged designation in a
descriptive, not merely suggestive, sense.”). If so, restricting
Victoria’s Secret’s use of “Delicious” does not implicate the
same concerns regarding the monopolization of the lexicon
that lie at the heart of the fair use defense. See KP Permanent
I, 543 U.S. at 122; see also Peaceable Planet, Inc. v. Ty, Inc.,
362 F.3d 986, 991 (7th Cir. 2004) (“There are many more
ways of suggesting than of describing.”); Abercrombie, 537
F.2d at 11 (“The English language has a wealth of synonyms
and related words with which to describe the qualities which
manufacturers may wish to claim for their products . . . .”).
Overall, we think a genuine issue of material fact remains as
to whether Victoria’s Secret used “Delicious” only to describe
its goods or services.
12266 FORTUNE DYNAMIC v. VICTORIA’S SECRET
3
The last factor of the fair use defense asks whether the
defendant has exercised “good faith.” We have not given this
factor of the fair use defense much attention, but we agree
with the Second Circuit that it involves the same issue as the
intent factor in the likelihood of confusion analysis: “whether
defendant in adopting its mark intended to capitalize on plain-
tiff’s good will.” EMI, 228 F.3d at 66. Fortune argues that a
jury could construe Victoria’s Secret’s failure to investigate
the possibility that DELICIOUS was being used as a mark as
evidence of bad faith. For support, Fortune offers the other
portion of Fueroghne’s expert testimony, in which Fueroghne
opines that “[i]t is standard practice in the advertising and
marketing industry . . . to perform at least a cursory search on
the Internet and with the United State[s] Trademark Office to
see what else is out in the market . . . to avoid possible con-
flicts or confusion.” The district court excluded this evidence
for the same reasons it excluded Fueroghne’s other testimony,
because Fueroghne “is not an expert in any field relevant to
this case.”
With respect to this portion of Fueroghne’s testimony, the
district court is plainly wrong. Fueroghne has forty years of
experience in the marketing and advertising industry, strongly
suggesting that he is familiar with what companies within the
industry do when placing words on a product. Fueroghne’s
expertise, then, is one based on experience. Cf. Hangarter v.
Provident Life and Accident Ins. Co., 373 F.3d 998, 1016 (9th
Cir. 2004) (concluding that an expert’s “significant knowl-
edge of and experience within the insurance industry” pro-
vided “the minimal foundation” required to give “ ‘expert’
testimony on the practice and norms of insurance companies
in the context of a bad faith claim” (emphasis and quotation
marks omitted)). More important, Fueroghne’s testimony
“will assist the trier of fact . . . to determine a fact in issue,”
FED. R. EVID. 702, as it supports an inference that Victoria’s
Secret acted in bad faith. Therefore, we conclude that the dis-
FORTUNE DYNAMIC v. VICTORIA’S SECRET 12267
trict court abused its discretion in excluding this portion of
Fueroghne’s testimony.
On the whole, we think that the evidence of malicious
intent on the part of Victoria’s Secret, even with Fueroghne’s
expert testimony, is thin at best. But Victoria’s Secret’s fail-
ure to investigate whether someone held a DELICIOUS trade-
mark, combined with the other evidence discussed above,
provides support for a jury’s potential finding that Victoria’s
Secret’s carelessness in its use of the word “Delicious” ren-
dered its use of that word “objectively [un]fair.” KP Perma-
nent I, 543 U.S. at 123.
IV
Finally, Fortune asks us to remand the case to a different
judge. Because this case does not present “unusual circum-
stances,” McSherry v. City of Long Beach, 423 F.3d 1015,
1023 (9th Cir. 2005), we reject Fortune’s request. There is no
indication in the record that the district court will be unable
to put out of his mind previously expressed views or that reas-
signment is necessary to “preserve the appearance of justice.”
Id. (quotation marks omitted). Fortune principally relies on
the district court’s wholesale adoption of Victoria’s Secret’s
proposed findings of facts and law. But although we “reiterate
our disfavor of the practice [of] . . . adopting one party’s pro-
posed findings of fact and conclusions of law substantially
verbatim,” Vuitton Et Fils S.A. v. J. Young Enters., Inc., 644
F.2d 769, 778 (9th Cir. 1981); see also Silver v. Executive Car
Leasing Long-Term, 466 F.3d 727, 733 (9th Cir. 2006)
(remarking on the “regrettable practice of adopting the find-
ings drafted by the prevailing party wholesale”), we decline
to impose the “extraordinary measure of reassignment,”
McSherry, 423 F.3d at 1023.
V
This case should go to trial. A jury could reasonably con-
clude that the majority of Sleekcraft factors favors Fortune.
12268 FORTUNE DYNAMIC v. VICTORIA’S SECRET
Furthermore, in light of evidence suggesting that Victoria’s
Secret used the term “Delicious” as a trademark and sugges-
tively rather than descriptively, together with Victoria’s
Secret’s failure to investigate the possibility that DELICIOUS
was already being used as a trademark, there remains a genu-
ine issue of material fact as to whether Victoria’s Secret used
“Delicious” unfairly.
REVERSED and REMANDED.