Legal Research

Victor?s got a little secret - Victoria doesn?t like it

By scott

In an interesting - and long running - trademark dilution case, the US Court of Appeal has held that the use of the name “Victor’s Little Secret” or “Victor’s Secret” by a small retail store in a mall in Elizabethtown, Kentucky, owned by Victor Moseley, that sells assorted merchandise, including “sex toys” and other sexually oriented products, because it is sex related ? disparages and tends to reduce the positive associations and the “selling power” of the “Victoria’s Secret” trademark.

The case is of interest because the US Supreme Court has already reversed a previous opinion of the same Court, in this same case the first time the appeal court affirmed an injunction against “Victor’s Little Secret” issued by the District Court. The Supreme Court held that a trademark owner had to show “actual harm” rather than merely a “likelihood” of harm, and Victoria’s secret had failed to do so.

On remand to the District Court from the Supreme Court after the 2003 reversal, no new evidence was introduced, and the District Court reconsidered the case based on the same evidence but under the Trademark Dilution Revision Act of 2006 ? which amended the Federal Trademark Dilution Act of 1995, on which the first case was decided.

The new act’s language ? introduced as a result of this case introduced new standards for measuring trademark “dilution by tarnishment” specifically that the standard for proving a dilution claim is “likelihood of dilution” and that both dilution by blurring and dilution by tarnishment are actionable.

Using this new standard, and Congress’ implied intention to reduce the burden of proof on a trademark holder, the Appeal court stated the phrase “likely to cause dilution” used in the new statute significantly changed the meaning of the law from “causes actual harm” under the pre-existing law. Therefore it held that even without any evidence that any consumers felt that “Victor’s Little Secret” tarnished Victoria’s Secret, the law should now be should now be interpreted to create “a kind of rebuttable presumption, or at least a very strong inference, that a new mark used to sell sex-related products is likely to tarnish a famous mark if there is a clear semantic association between the two.”

In her dissent of the majority opinion, Judge Moore stated that whilst she agreed there is a clear association between the two marks, the important point was whether that association is likely to harm Victoria’s Secret’s reputation. On the evidence before the court she found that Victoria’s Secret presented no probative evidence that anyone is likely to think less of Victoria’s Secret as a result of “Victor’s Little Secret” and cannot therefore prevail on its claim of dilution by tarnishment.

I’m with Judge Moore on this one. It is hard to see how one shop ? now operating under the name Cathy’s Little Secret ? is going to tarnish the reputation of a global brand like Victoria’s Secret. Yes I am sure Victor was thinking what a fun play on words it would be, but seriously, taking the guy to court? That action in itself does more to harm the reputation and any positive associations I might have had with Victoria’s Secret.

Oh, and yes, god forbid that anyone would start associating Victoria’s Secret with sex ?

It seem likely that the Supreme Court will once again be called upon to make the final judgement in this case, and let’s hope they throw it back where it belongs.

Full post as published by Information Overload on May 27, 2010 (boomark / email).