© 2003, Gallagher & Dawsey Co., LPA
April 2003

The Supreme Court has recently been involved in lingerie, adult videos, sex toys and “adult novelties.” Their involvement was unfortunately limited to the hearing of In Moseley v. V Secret Catalogue, Inc. The case is unique because it deals with trademark dilution rather than traditional trademark infringement. Additionally, the holding is significant in that it establishes that a trademark owner must show “actual harm” to recover under the Federal Trademark Dilution Act (15 U.S.C. S 1125(c)(1), 1127). Prior to the decision district courts were in disagreement as to whether “actual harm” or merely “likelihood of harm” was required to prove dilution of “famous” trademarks.

Mr. and Mrs. Victor Mosely opened their Elizabethtown, Kentucky store, originally named Victor’s Secret, in 1998 to sell the exotic adult items listed above. Not surprisingly, the holders of the “Victoria’s Secret” mark for women’s lingerie did not appreciate the use of such a similar mark associated with such scandalous goods and quickly demanded that the couple stop the use of the mark “Victor’s Secret.” After all, the Victoria’s Secret chain of stores has invested considerable sums in the identity of the Victoria’s Secret mark through its 750 retail stores and the 400 million catalogs that it distributes each year. The couple then changed the name of the store to Victor’s Little Secret in an attempt to appease Victoria’s Secret.

Soon thereafter, Victoria’s Secret sued the Moseleys in federal district court alleging trademark infringement and trademark dilution. Victoria’s Secret sought injunctive relief under the Federal Trademark Dilution Act of 1995. The Court pointed out that the applicable statute provides relief against another mark that “causes dilution,” not merely one where there is a “likelihood of confusion,” as used in other federal and state statutory sections.

Unfortunately, the Court provided little information on how to prove actual dilution. The Court did however reject the argument that one must prove actual loss of sales or profits to prove actual dilution. The Court concluded there was “a complete absence of evidence” of dilution in the present case. The Court rejected the undisputed fact that an advertisement caused an army officer to make the “mental association” between the store’s name and the Victoria’s Secret mark as evidence of actual dilution. The Court felt that the officer’s “mental association” did not lead to a reduced opinion of the Victoria’s Secret mark.

Accordingly, it appears that the Court has made it clear that owners of famous trademarks will have to compile expensive, and difficult to obtain, data to show actual harm as required for trademark dilution cases.