SOUTHEAST TEXAS RECORD

SHERMAN-After Victoria's Secret discovered that a Texas company was attempting to register the mark "VS Secrets of Romance" with the U.S. Patent and Trademark Office, it opened an investigation and discovered the company was selling a line of personal care products with a similar trademark and trade name.

Victoria's Secret Stores Brand Management Inc. filed suit against VS Secrets of Romance LLC and Samir Abed-Rabbo and Does 1-10 on April 1 in the Sherman Division of the Eastern District of Texas.

Causes of action filed against the defendants include counterfeiting and trademark infringement, unfair competition, trademark dilution, trade name infringement, common law trademark infringement and unfair competition, and injury to business reputation, trade name and dilution.

Although the defendant's attempt to register the name was denied due to the similarity with Victoria's Secret's names and trademarks, the defendant continued to use the protected names on its Web site and products.

The plaintiff claims it sent the company a cease and desist letter in June 2009. The efforts were temporarily effective as the defendant's Web site was inaccessible as "under construction."

However in February 2010, Victoria's Secret discovered that the Romance Web site was active again and marketing products that infringed upon the trademark rights of Victoria's Secret.

The plaintiff is asking the court to permanently enjoin and restrain the defendant from using its trademarks or names, for an award of all profits gained by the defendant as a consequence of its unlawful actions, an award of punitive damages, attorneys' fees and costs.

Austin attorney Louis T. Pirkey of Pirkey Barber LLP is representing the plaintiff. Additional counsel includes New York attorneys Frank J. Colucci and Richard P. Jacobson of Colucci & Umans. Jury trial requested.

U.S. District Judge Michael H. Schneider is assigned to the litigation.

Case No 4:10cv00158