1999 Decisions

Opinions of the United

States Court of Appeals

for the Third Circuit

1-21-1999

A&H Sportswear Inc v. Victorias Secret

Precedential or Non-Precedential:

Docket 97-1570

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Recommended Citation

"A&H Sportswear Inc v. Victorias Secret" (1999). 1999 Decisions. Paper 18.

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Filed January 21, 1999 

UNITED STATES COURT OF APPEALS 

FOR THE THIRD CIRCUIT 

No. 97-1570 

A&H SPORTSWEAR INC.; MAINSTREAM 

SWIMSUITS, INC., 

 Appellants in No. 97-1570 

v. 

VICTORIA'S SECRET STORES, INC.; 

VICTORIA'S SECRET CATALOGUE, INC. 

On Appeal from the United States District Court 

for the Eastern District of Pennsylvania 

(D.C. No. 94-cv-07408 ) 

(District Judge: Hon. Franklin S. VanAntwerpen) 

Argued May 19, 1998 

Before: SLOVITER, GREENBERG and GIBSON,* 

Circuit Judges 

Resubmitted December 14, 1998 

Before: SLOVITER, GREENBERG and GIBSON,* Circuit 

Judges 

(Filed January 21, 1999) 

_________________________________________________________________ 

* Hon. John R. Gibson, United States Senior Circuit Judge for the 

United States Court of Appeals for the Eighth Circuit, sitting by 

designation. 
 Michael F. Snyder 

 Seidel, Gonda, Goldhammer & 

 Abbott 

 Philadelphia, PA l9l02 

 Norman Seidel 

 Laub, Seidel, Cohen & Hof 

 Easton, PA 18042 

 Arthur H. Seidel 

 Stephen J. Meyers (Argued) 

 Seidel, Gonda, Lavorgna & Monaco 

 Philadelphia, PA l9l02 

 Attorneys for A & H Sportswear 

 Inc. and Mainstream Swimsuits, 

 Inc., Cross-Appellants in No. 97- 

 1570 

 H. Robert Fiebach 

 Cozen & O'Connor 

 Philadelphia, PA l9l03 

 Frank J. Colucci (Argued) 

 Richard P. Jacobson 

 Colucci & Umans 

 New York, N.Y. 10022 

 Attorneys for Victoria's Secret 

 Stores, Inc. and Victoria's Secret 

 Catalogue, Inc., Cross-Appellees in 

 No. 97-1570 

OPINION OF THE COURT 

SLOVITER, Circuit Judge. 

This trademark infringement action was filed by A&H

Sportswear Inc. and its affiliate, Mainstream Swimsuits, 

Inc., the maker and distributor respectively of swimwear 

under the trademark MIRACLESUIT (together "A&H"), 

against Victoria's Secret Stores, Inc. ("VS Stores"), and 

Victoria's Secret Catalogue, Inc. ("VS Catalogue"), (together 

 2 
"VS"), a well-known manufacturer of lingerie and now 

swimwear. The District Court gave judgment for VS on 

A&H's claim that VS's use of THE MIRACLE BRA on its

lingerie infringed the MIRACLESUIT trademark, finding that 

there was no likelihood of confusion. The District Court 

also found that VS had violated the Lanham Act by its use 

of THE MIRACLE BRA on its swimwear, finding a 

"possibility of confusion" with the MIRACLESUIT swimsuit 

made by A&H, and ordered certain relief. 

VS appeals the judgment that THE MIRACLE BRA 

swimwear infringes A&H's MIRACLESUIT trademark (No.

97-1541), arguing that the District Court applied an 

erroneous standard of law. A&H filed a cross appeal (No. 

97-1570) contending that the District Court clearly erred in 

failing to find a likelihood of confusion between THE 

MIRACLE BRA mark and A&H's prior MIRACLESUIT mark. 

This panel of the court heard argument on the appeal 

and cross-appeal on May 19, 1998. Thereafter, we 

recommended that the court originate a rehearing en banc 

to review whether it wished to adhere to the standard of 

possibility of confusion applied by the District Court. After 

giving the parties an opportunity to be heard on that issue, 

the court voted to consider VS's appeal (No. 97-1541) en 

banc, but resubmitted A&H's cross-appeal (No. 97-1570) to 

the panel as not presenting any issue requiring en banc 

consideration. Accordingly, we turn to the issues raised on 

A&H's cross-appeal. 

I. 

FACTS AND PROCEDURAL HISTORY 

The facts underlying this cross-appeal are set forth in the 

District Court's published opinion, A&H Sportswear Co. v. 

Victoria's Secret Stores, Inc., 926 F. Supp. 1233 (E.D. Pa. 

1996) (addressing liability).1 We will set forth the pertinent 

_________________________________________________________________ 

1. The court's other published opinion in this case, A&H Sportswear Co. 

v. Victoria's Secret Stores, Inc., 967 F. Supp. 1457 (E.D. Pa. 1997) (as 

amended), addresses remedies and relates solely to the appeal before the 

en banc court. 

 3 
facts and procedural history needed to address the 

substance of this appeal, recognizing that our discussion 

will duplicate some of the material in the en banc opinion. 

The District Court's Findings of Fact from the opinion on 

liability are designated hereafter as FF. 

A&H, a closely held Pennsylvania corporation and maker 

of 10% of the nation's swimsuits, was issued a trademark 

for its MIRACLESUIT on October 27, 1992; its affiliate, 

Mainstream Swimsuits, Inc., a Pennsylvania corporation, 

served as the exclusive distributor of the MIRACLESUIT 

through its SWIM SHAPER division. Both corporations are 

controlled by members of the Waldman family. FF 1-2. 

The MIRACLESUIT was developed and subsequently 

marketed as a "control" suit whose patented fabric and 

design affords the wearer greater "hold-in" control of the 

hips and waist, which makes the wearer appear slimmer 

without the use of girdle-like undergarments. Most 

MIRACLESUITs contain underwire bras, are of a one-piece 

design, and retail for $45 to over $100. FF 14. Thefirst 

interstate use of the mark MIRACLESUIT and the first 

interstate sale of a MIRACLESUIT occurred in November 

1991. FF 21. The name MIRACLESUIT was chosen because 

it was "unique, dynamic, exciting, and memorable." FF 22. 

In 1992, the MIRACLESUIT was widely advertised, shown, 

and discussed in trade shows, magazines and the electronic 

media. FF 27. The MIRACLESUIT was also sold for a brief 

time in the VS catalogue (1,700 suits were purchased by VS 

in 1992 and 1993), but the relationship was discontinued 

because in several instances VS failed to identify the 

swimsuit by its MIRACLESUIT trademark. FF 29, 30. 

VS Stores, the nation's top retailer of lingerie, is a 

Delaware corporation headquartered in Columbus, Ohio, 

and operates over 650 stores throughout the country which 

focus on intimate apparel, with bra sales the leading 

product. FF 5. VS Catalogue, a Delaware corporation

headquartered in New York City, is a mail order business 

with a much wider array of merchandise (including 

swimwear) sold through its over 300 million catalogues 

circulated each year. FF 6. The companies responsible for 

the stores and the catalogue are independent subsidiaries 

 4 
of Intimate Brands, Inc., owned by The Limited, Inc., based 

primarily in London. FF 7. 

In 1992, VS Stores began developing a cleavageenhancing bra which was introduced (then unnamed) in 

each store in August 1993 and first appeared in the VS 

catalogue in February 1994. FF 12, 17, 19. The bra uses 

removable pads, lace, straps, and underwire to accentuate 

the wearer's bust. FF 15. VS Stores sought a name for its 

new push-up bra that had a "fresh, flirtatious fun attitude." 

It chose THE MIRACLE BRA name in December 1992, 

allegedly after a model tried the new bra and exclaimed, 

"Wow, this is a miracle!" FF 23. The name THE MIRACLE 

BRA was first used in VS Stores in November 1993. FF 19. 

VS Stores was issued a registration for its trademark THE 

MIRACLE BRA on August 9, 1994. FF 25. Since itsfirst 

brisk sales, THE MIRACLE BRA, which retails for under 

$20, has been heavily marketed and has generated over 

$132 million in sales. FF 69. 

A&H, which did not initially object to VS's trademark use 

of THE MIRACLE BRA, did so after VS began to extend THE 

MIRACLE BRA into swimwear with its introduction of THE 

MIRACLE BRA bikini in the November 1994 VS catalogue 

and in ten VS stores as a test market. VS's sales of 

swimwear expanded rapidly, and in 1995 VS incorporated 

THE MIRACLE BRA design and trademark into a one-piece 

swimsuit. 

In August 1994, even before its first sale, VS Stores 

applied for a registration of THE MIRACLE BRA trademark 

for swimwear. FF 34. In February 1995, the Patent and 

Trademark Office (PTO) refused the registration on the 

basis of A&H's prior registration of the MIRACLESUIT, 

although A&H had not interposed an objection to the

registration. FF 31, 36. Apparently because it had been 

using THE MIRACLE BRA name in lingerie, neither VS 

Stores nor VS Catalogue conducted a separate trademark 

search of THE MIRACLE BRA trademark as it applied to 

swimwear. FF 35. In December 1994, just a month after the 

introduction of THE MIRACLE BRA swimwear collection, 

A&H filed this suit alleging, inter alia, infringement of its 

trademark MIRACLESUIT, and seeking a preliminary 

 5 
injunction and damages. The District Court consolidated 

the injunction hearing with a bench trial on the merits. 

Following a two-week bench trial, the District Court 

found no likelihood of confusion between THE MIRACLE 

BRA mark as applied to lingerie and the MIRACLESUIT

mark. Accordingly, the court entered judgment for Victoria's 

Secret and against A&H on that claim of infringement. 

When VS appealed from the District Court's decision in 

favor of A&H with respect to THE MIRACLE BRA for 

swimwear, A&H filed this cross-appeal. We have 

jurisdiction under 28 U.S.C. S 1291. 

II. 

DISCUSSION 

The MIRACLESUIT v. THE MIRACLE BRA for Lingerie 

In a trademark infringement action, the "likelihood of 

confusion" between two marks is a factual matter, subject 

to review for clear error. Versa Prods. Co. v. Bifold Co., 50 

F.3d 189, 200 (3d Cir. 1995). Clear error exists when, 

giving all deference to the opportunity of the trial judge to 

evaluate the credibility of witnesses and to weigh the 

evidence, we are "left with a definite and firm conviction 

that a mistake has been committed." Anderson v. Bessemer 

City, 470 U.S. 564, 573 (1985) (quoting United States v. 

United States Gypsum Co., 333 U.S. 364, 395 (1948)). The 

District Court's conclusions of law are subject to plenary 

review. See Duraco Prods., Inc. v. Joy Plastic Enters., 40 

F.3d 1431, 1438 (3d Cir. 1994). 

In order for A&H, as the owner of a valid and legally 

protectable mark, to hold VS liable for trademark 

infringement under S 32 of the Lanham Act, it must show 

that VS has used a confusingly similar mark. Section 32(1) 

provides, in pertinent part: 

 Any person who shall, without the consent of the 

 registrant-- 

 (a) use in commerce any reproduction, counterfeit, 

 copy, or colorable imitation of a registered mark in 

 6 
 connection with the sale, offering for sale,

 distribution, or advertising of any goods or services 

 on or in connection with which such use is likely to 

 cause confusion, or to cause mistake, or to deceive; 

 . . . shall be liable in a civil action by the registrant 

 . . . . 

15 U.S.C. S 1114(1) (emphasis added). 

Similarly, S 43(a) of the Lanham Act, which governs

unfair competition claims, provides in pertinent part: 

 Any person who, on or in connection with any goods or 

 services, . . . uses in commerce any word, term, name, 

 symbol, or device . . . or any false designation of origin 

 . . . which-- 

 (A) is likely to cause confusion, or to cause mistake, 

 or to deceive as to . . . the origin, sponsorship, or 

 approval of [his or her] goods, services, or

 commercial activities by another person . . . shall be 

 liable in a civil action by any person who believes 

 that he or she is or is likely to be damaged by such 

 act. 

15 U.S.C. S 1125(a)(1) (emphasis added). 

The central inquiry in a trademark infringement case 

focuses on the likelihood of consumer confusion. The 

District Court determined that VS's use of THE MIRACLE 

BRA mark with lingerie did not create a likelihood of 

confusion with the MIRACLESUIT. 

The test to be applied to determine likelihood of 

confusion differs when the goods compete and when they 

do not. Where the trademarks involved are not used on 

directly competing merchandise we look to the ten "Scott 

factors" set forth in Scott Paper Co. v. Scott's Liquid Gold, 

Inc., 589 F.2d 1225, 1229 (3d Cir. 1978), sometimes also 

called "Lapp factors" after Interpace Corp. v. Lapp, Inc., 721 

F.2d 460 (3d Cir. 1983). The District Court sought to apply 

those ten factors assiduously, and after analyses 

summarized its conclusions as follows: 

 [W]e hold that with respect to the likelihood of 

 confusion between Plaintiffs' MIRACLESUIT and 

 7 
 Defendants' THE MIRACLE BRA, (1) the two marks are 

 similar in that they share a dominant portion, the word 

 "miracle," yet remain distinct by the addition of the 

 word that follows (bra or suit) when designating those 

 respective goods; (2) the marks are both strong in their 

 respective industries which we believe are swimsuits 

 for Plaintiffs' MIRACLESUIT and lingerie for

 Defendants' THE MIRACLE BRA. As those marks 

 extend into the industry dominated by the other (i.e., 

 MIRACLESUIT for lingerie or THE MIRACLE BRA for 

 swimwear), the strength of the marks and the amount 

 of protection they receive commensurately decrease; (3) 

 the goods are in different price categories; (4) the 

 Defendants had used their THE MIRACLE BRA mark 

 for slightly over one year prior to an incident of actual 

 confusion. The few incidents occurred just two months 

 following Defendants' extension of THE MIRACLE BRA 

 to swimwear, an industry in which Plaintiffs had 

 already produced and registered their MIRACLESUIT 

 for several years.[ ]; (5) based on the record before us, 

 Defendants did not adopt its THE MIRACLE BRA mark 

 with the conscious and deliberate bad faith intent to 

 free-ride on the success of Plaintiffs' mark; (6) the 

 evidence of actual confusion suggests it was

 Defendants' entry into swimwear rather than into the 

 lingerie market with the name "miracle" that caused 

 potential confusion among consumers; (7) the goods 

 are marketed through the same media; (8) the products 

 are marketed to women of similar age; (9) the goods 

 serve different functions; and (10) the Plaintiffs' limited 

 involvement in developing and manufacturing bras is 

 not germane to our analysis where none of these efforts 

 were conducted using marks or names at issue in this 

 litigation. We therefore conclude that Plaintiffs have not 

 met their burden under the Scott Paper standard and 

 have not established a likelihood of confusion between 

 their MIRACLESUIT swimsuit and Defendants' THE 

 MIRACLE BRA (bra). 

926 F. Supp. at 1263-64. 

A&H argues, in essence, that the appropriate application 

of the ten-factor Scott/Lapp test required afinding of a 

 8 
likelihood of confusion and hence a finding of infringement. 

We held in Fisons Horticulture, Inc. v. Vigoro Indus., 30 F.3d 

466 (3d Cir. 1994), that the "weight given to each factor in 

the overall picture, as well as its weighing for plaintiff or 

defendant, must be done on an individual fact-specific 

basis." Id. at 476 n.11. We consider the factors seriatim. 

Similarity of the Marks 

A&H contends that inasmuch as the District Court found 

the marks were nearly identical by use of "miracle," it erred 

in finding that the addition of a descriptive term ("bra" for 

one and "suit" for the other) to the word lessened any 

confusion. We have previously stated that descriptive terms 

(such as "bra" and "suit") must be considered in assessing 

infringement. See generally Country Floors, Inc. v.

Partnership of Gepner and Ford, 930 F.2d 1056, 1065 (3d 

Cir. 1991). In evaluating the effect of similarity, it is also 

relevant that the use of the housemark "Victoria's Secret" 

frequently accompanies THE MIRACLE BRA product. 

Similarly, the MIRACLESUIT swimsuits generally had a 

sewn-in label bearing either the name SWIM SHAPER or 

MIRACLESUIT, and, after August, 1994, also bore 

hangtags. The key finding by the District Court regarding 

similarity was, "We do not believe that the overall

impression created by THE MIRACLE BRA bra and the 

MIRACLESUIT swimsuit is essentially the same." 926 F. 

Supp. at 1257-58 (emphasis added). This is significant 

because we have previously stated that it is the"overall 

impression" created by the marks that should be the

central focus. Fisons, 30 F.3d at 478. 

Strength of The Mark 

The District Court found that the word "miracle" is

"fanciful," deserving the highest protection, and, thus, when 

applied to lingerie or swimsuits, is a "strong mark." 926 F. 

Supp. at 1259. However, the strength of MIRACLESUIT and 

THE MIRACLE BRA and the amount of protection they 

receive decrease when each mark is extended into the 

other's industry. See id. at 1263. 

A&H contends that the District Court failed to evaluate 

the commercial strength of the MIRACLESUIT mark in the 

context of its claim of reverse confusion, and we have found 

 9 
no such discussion in the District Court's opinions. 

According to A&H, THE MIRACLE BRA presence in the 

marketplace overwhelmed the MIRACLESUIT mark such 

that consumers would likely be confused in thinking the 

senior MIRACLESUIT mark was attributed to the junior 

user, VS. The District Court did not so find, and we do not 

think such a finding was mandated by the evidence in the 

swimwear vs. lingerie inquiry. We leave A&H's contention 

regarding reverse confusion in the swimwear market to the 

decision in No. 97-1541. 

The Price of the Goods, the Time Before Confusion and 

Actual Confusion 

The District Court found that THE MIRACLE BRA and 

the MIRACLESUIT have different prices (under $20 

compared to over $50 respectively), see id. at 1260, a 

finding that favors VS. This led the District Court to find 

that the difference between the prices of the lingerie and 

the swimsuits diminishes any likelihood of confusion 

between the products. 

The court also noted the absence of any confusion arising 

from THE MIRACLE BRA for a year after it was introduced, 

and that only after THE MIRACLE BRA was extended to

swimwear was there any incident of actual confusion. See 

id. at 1260. 

Defendants' Intent 

As intent has been held to play a role in the analysis of 

infringement, we look carefully at the District Court's 

finding that A&H failed to prove "bad faith or deliberate 

intent" to infringe by VS. Id. at 1261. The court reviewed 

the evidence A&H had presented in an effort to show

intentional infringement, including the testimony of VS 

Stores's Marketing Director, and found that, despite VS's 

knowledge of the MIRACLESUIT mark and its failure to 

conduct an additional trademark search before it expanded 

THE MIRACLE BRA mark to swimwear, there was no bad 

faith on the part of VS. See id. 

A&H cites authority that intent is not necessary to prove 

infringement and that good faith is not a defense to 

infringement. We do not disagree as to the law. However, 

 10 
the District Court's conclusion that there was no likelihood 

of confusion did not rest on the intent of VS. We recognize 

that another court might have drawn a different inference 

from VS's prior knowledge of the MIRACLESUIT mark but 

note that there were numerous other relevant facts before 

the court. We cannot conclude that the District Court 

clearly erred in finding no intent to infringe by VS. 

Similar Marketing/Media Channels & Customers 

The District Court found that VS and A&H "promote their 

products through the same channels of trade and through 

the same media." Id. at 1262, FF 43. It also found that the 

target customer base for the MIRACLESUIT and THE 

MIRACLE BRA bra is similar. FF 38, 39. Not surprisingly, 

VS contends that the District Court weighed this factor too 

favorably to A&H, and notes in support of its contention of 

error that it sells THE MIRACLE BRA only through the VS 

catalogue and VS stores. There is support for the District 

Court's finding and we cannot characterize it as clearly 

erroneous. 

Relationship of the Goods 

Consistent with each party's tendency to challenge any 

finding that it deems adverse, A&H disputes the District 

Court's finding that, although related, swimwear and 

lingerie "serve different functions" and are "separate 

industries." Id. at 1262-63. A&H hasfiled a motion asking 

this court to take judicial notice that these industries are 

"so closely related in their channels of trade and 

appearance as to be, at times, indistinguishable." We deny 

the motion as it requires a factual determination we believe 

is inappropriate for judicial notice. 

The reason we look to the relationship of the goods is to 

ascertain whether the goods were so related that a 

consumer would reasonably assume they were offered by 

the same source, thereby leading to confusion. See Fisons, 

30 F.3d at 481. The District Court found that "the 

consuming public would [not] expect A&H or Mainstream 

. . . to manufacture products in the lingerie market." 926 F. 

Supp. at 1263. We find no clear error, particularly as A&H 

had only limited involvement in the bra industry and, as 

 11 
the District Court noted, the products were sold in distinct 

manners. 

A&H contends that the relationship between the products 

is further evidenced by VS's opposition to A&H's proposed 

registration of THE MAGIC BRA, a new product by A&H

developed after the commencement of this lawsuit. A&H 

argues that because VS allegedly contends in the PTO 

opposition that the MAGIC BRA for swimsuits is 

confusingly similar to THE MIRACLE BRA for lingerie (a 

position it contends is contradictory to VS's arguments 

here), the District Court should have considered evidence of 

that PTO proceeding. Inasmuch as the facts sought to be 

introduced were post-trial, and the MAGIC BRA mark is 

different than the marks at issue here, the District Court 

did not abuse its discretion in refusing to consider that 

evidence. 

Factor Summary 

In balancing the relevant factors, no one of the Scott 

factors is more weighty than another except, perhaps, the 

similarity of the marks. See Fisons, 30 F.3d at 476 & n.11 

(emphasizing similarity). There is certainly similarity 

between the marks at issue, but that similarity was

discounted by the District Court because the marks were 

not identical in their entirety. In sum, the District Court 

weighed each factor as required. After reviewing the record 

and the parties' argument, we conclude that the court did 

not commit clear error in finding there was no likelihood of 

confusion between THE MIRACLE BRA mark as applied to 

lingerie and the MIRACLESUIT mark, and hence no 

infringement.2 

_________________________________________________________________ 

2. A&H also appeals the District Court's rejection of its contention that 

VS violated the Pennsylvania Antidilution law, 54 Pa. Cons. Stat. Ann. 

S 1124, which provides for relief upon a showing of a "likelihood of 

injury 

to business reputation or of dilution of the distinctive quality" of a 

registered mark. Id. The District Court noted that "predatory intent" was 

relevant in establishing an antidilution claim, 926 F. Supp. at 1265 

(citing Nugget Distribs. Coop. v. Mr. Nugget, Inc., 776 F. Supp. 1012, 

1024 (E.D. Pa. 1991)). Having found no bad faith on the part of VS, the 

court rejected the state claim. We find no error in the District Court's 

dismissal of this claim. 

 12 
III. 

CONCLUSION 

For the reasons set forth, we will affirm the judgment of 

the District Court in favor of VS on A&H's claim arising out 

of THE MIRACLE BRA with lingerie. 

A True Copy: 

Teste: 

 Clerk of the United States Court of Appeals 

 for the Third Circuit 

 13