Law School Case Brief
V Secret Catalogue, Inc. v. Moseley - 605 F.3d 382 (6th Cir. 2010)
The phrase "likely to cause dilution" used in the Trademark Dilution Revision Act of 2006, 15 U.S.C.S. § 1125(c), significantly changes the meaning of the law from causes actual harm under the pre-existing law. The word "likely" or "likelihood" means "probably." The burden-of-proof problem, the developing case law, and the Restatement (Third) of Trademarks in § 25 (particularly subsection g) 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. This res ipsa loquitur-like effect is not conclusive but places on the owner of the new mark the burden of coming forward with evidence that there is no likelihood or probability of tarnishment. The evidence could be in the form of expert testimony or surveys or polls or customer testimony.
A store, owned and operated by defendant Victor Moseley, sold sexually oriented products while using the name "Victor's Little Secret." Plaintiffs, V Secret Catalogue, Inc. and Victoria's Secret Lingerie, Inc. (Secret), an international lingerie company, alleged that its "Victoria's Secret" mark was thereby tarnished. The district court entered an injunction requested by Secret in the company's suit alleging dilution by tarnishment, a violation of the Trademark Dilution Revision Act of 2006, 15 U.S.C.S. § 1125(c). Since then the shop has been operating under the name of "Cathy's Little Secret." The district court concluded that even though the two parties do not compete in the same market, the "Victor's Little Secret" mark -- because it is sex related -- disparages and tends to reduce the positive associations and the "selling power" of the "Victoria's Secret" mark. Defendant sought appellate review.
Did Secret’s case meet the definitions and standards for "dilution by tarnishment" set out in the new Trademark Dilution Revision Act of 2006, which amended the Federal Trademark Dilution Act of 1995?
The Court of Appeals for the Sixth Circuit held that § 1125(c) changed the actual harm standard in the former Federal Trademark Dilution Act of 1995, 15 U.S.C.S. § 1125(c)(1), requiring only a likelihood of harm to a senior mark's reputation. The change created a presumption, or at least a very strong inference, of tarnishment where there was a clear semantic association between a famous mark and a new mark, and the new mark was used to sell sex products. The store had not rebutted that presumption or inference by showing no real probability of tarnishment. The store's arguments that it had the right to use its proprietor's first name and that the association between the marks was de minimis were insufficient. The word "Secret" was used in the store's name only to create an association with the "Victoria's Secret" mark. The company's remedies were not limited to those listed in Trademark Dilution Revision Act of 2006, 15 U.S.C.S. § 1125(c)(5), which were additional to the injunctive relief provided for in § 1125(c)(1).
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