In the News Law360

Bath & Body Bites 1st In 'Twilight' Trademark Battle

Bath & Body Works Brand Management Inc. sued the maker of the "Twilight" movies in New York on Tuesday, seeking a judgment that the retailer's Twilight Woods toiletry products do not infringe a trademark for the vampire saga.

The use of the word "Twilight" in the Twilight Woods line of lotions, shower gels and other products is not likely to confuse consumers into thinking they originate from filmmaker Summit Entertainment LLC rather than Bath & Body, according to the suit filed in the U.S. District Court for the Southern District of New York.

"[T]he evidence to which defendant has pointed, including various articles and YouTube clips, reinforces the fact that consumers are able to identify the Twilight Woods products as originating from BBW and the 'Twilight' motion pictures as originating from defendant," the suit said.

Bath & Body's suit was prompted by a Nov. 1 cease-and-desist letter from Summit objecting to its use of the term Twilight Woods, and a Jan. 27 letter from the movie studio also taking issue with the toiletry line's "hues of brown" and "tree branches deferring in color," the suit said.

In arguing that there is no risk of confusion between the marks, Bath & Body pointed out that it adds the word Woods to Twilight and aims to evoke the time of day just after sunset, while Summit uses the word to refer to its vampire movies.

Summit holds no federal trademark registrations for the use of the word twilight on personal care products, despite having attempted to obtain one, the suit says.

The U.S. Patent and Trademark Office refused to register a trademark for Summit for the word twilight on fragrances and cosmetics because it could be confused with one held by another company, Coty Prestige Lancaster Group, Bath & Body said.

In defending that application, Summit pointed out that the Coty mark connoted the time of day, while its own referred to the motion picture, according to the suit.

"For the very same reasons that defendant argued in opposition to the USPTO action ...there is no likelihood of confusion between plaintiff's Twilight Woods mark and defendant's claimed Twilight mark," the suit said.

Bath & Body also claims the color palettes and tree-related imagery on the Twilight Woods products differ from those on the movie's promotional materials, and in any case, Summit cannot stake an exclusive claim on such generic elements.

The retailer is seeking an order that its Twilight Woods products do not infringe, unfairly compete with or dilute Summit's claimed mark or falsely designate the origin of the toiletry products.

Bath & Body is also seeking to enjoin Summit from suing it over the manufacture, marketing and sale of the Twilight Woods products, as well as attorneys' fees and court costs.

"In light of Summit's threats, Bath & Body Works had no choice but to file suit protecting its right to use the common word twilight, as part of the name of its Twilight Woods personal care products," said Dale Cendali of Kirkland & Ellis LLP, who represents the plaintiff. "These products are part of BBW's Signature line that includes other evocatively named products such as Moonlight Path, Dancing Waters and Midnight Pomegranate."

A representative for Summit could not be immediately reached for comment Wednesday.

Kirkland & Ellis LLP represents Bath & Body. Attorney information for Summit was not immediately available.

The case is Bath & Body Works Brand Management Inc. v. Summit Entertainment LLC, case number 11-cv-01594, in the U.S. District Court for the Southern District of New York.