So Who Owns Juicy?

As for the registered marks Juicy, Choose Juicy, and Juicy Couture, the court undertook a detailed analysis of trademark infringement. Regarding the strength of the mark, the court found Juicy to be merely descriptive and not inherently distinctive. Relying on the Oxford English Dictionary definition for “juicy” it noted that the word has several meanings, including “[1] full of or abounding in juice; [2] succulent and suggestive, especially in a sexual way; [3] piquant, racy, and sensational.” (A fourth juicy definition, “having rich coloring suggestive of a moist surface” was rejected as “somewhat antiquated.”) The court found that it takes “little imagination” to conclude that Couture was using Juicy in the third sense of racy and sensational, while Lancôme was using the word in the second sense of succulent.

The court also rejected Couture’s claim of Juicy confusion, concluding that “[f]or Couture, Juicy describes the sexy styling of its clothing. For Lancôme, Juicy evokes moistness and shine, which may be attractive qualities for a lipstick…. Lancôme’s choice of the word Juicy for a product name is thus utterly unremarkable.” Couture had attempted a scientific examination of Juicy confusion, namely, a September 2005 trip to a shopping mall. At the mall they surveyed 200 teenagers and adult females using laminated cards with the words Juicy, Juicy Wear, and Glossy Wear. Couture presented the results of this survey to the court, which showed that the teenagers were clearly confused. The court found the Juicy word association test to be of “no value” because of “fundamental flaws in its design.”

The court also concluded that the sophistication of consumers favored Lancôme. It noted that “[t]he fashion-conscious shopper that is the target of Couture’s marketing efforts would be unlikely to connect the up-and-coming California clothing company known for its t-shirts, jeans and tracksuits with the elegant sensuality of the French cosmetics giant because Lancôme named its product Juicy Wear.” Couture protested that Lancôme was aiming its promotion at younger customers “by using bright colors like pink and orange, and referring to Hollywood divas as sources of makeup tips.” The court took judicial notice that orange and pink are traditional lipstick colors and held that “Couture has no monopoly on the youth market, the colors orange and pink, or Hollywood stars.”

Finally, Lancôme raised the defense of laches, arguing that Couture unreasonable delayed pursuing its Juicy claim, thereby prejudicing the defendant. Couture conceded that it sat on its Juicy rights in the United States for years, but argued that this delay was mitigated by the Juicy suits it took in Europe in 2003 and 2004. The Court concluded that Couture’s Juicy actions in Europe were of minimal relevance because trademark rights are territorial and “therefore decisions by foreign courts are generally irrelevant and inadmissible in trademark actions in the United States.” Nor was the proposed Juicy global settlement in July 2004 relevant given that in those talks Couture had not claimed superior rights to Juicy.

The Juicy dispute concluded with a finding that Couture had failed to carry its burden on any of its Juicy claims. The moral of the story is that if you own Juicy, register the name in all its combinations, claim superior rights to it early and everywhere, and vigorously defend your Juicy name worldwide. But don’t be too jealous about your Juicy because, in the end, we all know the difference between Wear Juicy and Juicy Wear.