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To establish a dilution claim: (1) the senior mark must be famous; (2) it must be distinctive; (3) the junior use must be a commercial use in commerce; (4) it must begin after the senior mark has become famous; and (5) it must cause dilution of the distinctive quality of the senior mark.
Under their mark, plaintiffs, V Secret Catalogue, Inc., Victoria's Secret Stores, Inc., and Victoria's Secret Catalogue, Inc. (collectively "Victoria's Secret"), nationally marketed women's lingerie, clothing, and accessories. Under a similar mark, defendants, Victor and Cathy Moseley, d/b/a Victor's Little Secret, operated a retail store selling lingerie in addition to sexual videos and other adult items. Plaintiffs sued defendants, alleging inter alia that defendants used a trademark which blurred and tarnished plaintiffs’ mark in violation of the Federal Trademark Dilution Act (FTDA). The District Court granted plaintiffs’ motion for summary judgment and enjoined defendants’ use of the mark. Defendants challenged the decision.
Did defendants use a trademark which blur and tarnish plaintiffs’ mark in violation of the Federal Trademark Dilution Act?
The appellate court held that plaintiffs' mark was admittedly famous and was used prior to defendants' use of their mark, and that plaintiffs' arbitrary and fanciful mark was sufficiently distinctive to warrant protection from dilution. Moreover, the FTDA permitted an inference of likely harm rather than requiring a showing of actual harm, and the semantic and graphic similarities between the marks supported a finding of dilution. Plaintiffs' mark was tarnished by the likely association of plaintiffs' mark with defendants' adult products, and plaintiffs' mark was also blurred by the likely linking of plaintiffs' numerous outlets to defendants' single retail establishment. Accordingly, the judgment in favor of the plaintiffs was affirmed.