Association with Sex-Related Goods Creates Inference of Dilution by Tarnishment

Association with Sex-Related Goods Creates Inference of Dilution by Tarnishment

In a fractured disposition, the Sixth Circuit affirmed a grant of summary judgment for Victoria's Secret in V Secret Catalogue, Inc. v. Moseley, 605 F.3d 382 (6th Cir. Ky. 2010). The court ruled that defendants' use of VICTOR'S LITTLE SECRET for a store selling sex-related products tarnished the famous VICTORIA'S SECRET mark as a matter of law. In this Analysis, Anne Gilson LaLonde examines the Moseley litigation and discusses dilution by tarnishment. She writes:

Tarnishment Law

     Federal law currently defines dilution by tarnishment as "association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark." 15 U.S.C. § 1125(c)(2)(C). Tarnishment dilutes a famous trademark by reducing the value of the mark to the trademark owner by associating its mark with either shoddy products or obscene or inappropriate activity. It replaces the public's positive associations with the famous mark with negative associations. See Gilson on Trademarks § 5A.01[6] for a discussion of tarnishment.

"A Kind of Rebuttable Presumption"

     The Sixth Circuit concluded that the TDRA [Trademark Dilution Revision Act] "creates 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." 2010 U.S. App. LEXIS 10150. It cited several federal cases in which other courts had found that an association between a famous mark and "lewd or bawdy sexual activity" tarnished the famous mark. The court stated that it found "no exceptions in the case law that allow . . . a new mark associated with sex to stand" when faced with a tarnishment claim. The concurring judge urged the court to call the weight of the proof a strong inference rather than a presumption.

     The court concluded by finding that the Moseleys had failed to rebut this presumption, though agreeing that "the tarnishing effect of the Moseley's mark on the senior mark is somewhat speculative." It ruled in Victoria's Secret's favor and did not require the plaintiff to present evidence of a likelihood that consumers would change their mental associations due to the defendant's mark.

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