Descriptive Use of Third Party Trademark Does Not Infringe

The U.S. District Court for the Southern District of New York held that Dessert Beauty Inc.'s use of the phrase "Love Potion" constituted a fair use because the phrase was used in a generic and descriptive sense. Mara Fox owns an incontestable trademark registration for LOVE POTION for use with perfumes. When Dessert Beauty began using phrases such as "deliciously kissable love potion fragrance" to market its "Dessert" fragrance products, Fox lodged a number of public complaints against Dessert Beauty. Dessert Beauty subsequently filed for declaratory judgment of noninfringement and brought a claim for intentional interference with business relations. The court held that Dessert Beauty did not use the words "Love Potion" as a source identifier, and instead used them in a descriptive sense and in good faith.

TIP: Use caution when using third party trademarks in advertising even in a descriptive or non-trademark sense, because the cost of defending trademark infringement claims brought by third parties can be considerable. However, this case clarifies that not all uses of a third party's trademark necessarily constitute trademark infringement.