Unless you can prove it otherwise, Victor is not Victoria.
At least that’s what the United States Supreme Court found when it ruled that Victor’s Little Secret did not dilute the trademark of Victoria’s Secret. Victor’s Little Secret is located in a strip mall in Elizabethtown, Kentucky, just outside of Louisville. It sells adult videos, adult novelties and lingerie. Victor, actually Victor Moseley and his wife, opened the store as “Victor’s Secret” just before Valentine’s Day in 1998. They advertised the grand opening in a weekly publication that circulated at Fort Knox, Kentucky.An army colonel, whose family shopped at Victoria’s Secret, saw the ad and sent it to Victoria’s Secret, who wrote Victor that his store would cause dilution with Victoria’s Secret’s trademark. Victor changed the name to “Victor’s Little Secret,” but that wasn’t enough to satisfy Victoria’s Secret. It filed suit against the Moseleys for trademark infringement and trademark dilution under the Federal Trademark Dilution Act (FTDA).
A trademark is infringed when as a result of the other use, a person is confused as to the source of the product. A dilution, on the other hand, occurs when the capacity of the trademark to identify and distinguish the goods is lessened.After discovery, both sides filed for summary judgment. Victoria’s Secret demonstrated that it has 750 stores, two in the Louisville area and spent over $55 million in advertising Victoria’s Secret name. The colonel who initially complained to Victoria’s Secret said the ad did not change his conception of Victoria’s Secret. The trial court ruled against Victoria’s Secret on the trademark infringement claim since there was no evidence of likelihood of confusion between Victor’s Little Secret and Victoria’s Secret. However, the court ruled for Victoria’s Secret on the FTDA claim, noting that there was a “”likelihood of dilution”” of the Victoria’s Secret trademark.Victor appealed to the appellate court, but Victoria’s Secret did not. The appellate court affirmed the trial court, noting:
While no consumer is likely to go to the Moseleys’ store expecting to find Victoria’s Secret’s famed Miracle Bra, consumers who hear the name ‘Victor’s Little Secret’ are likely to think of the more famous store and link it to the Moseleys’ adult-toy, gag gift, and lingerie shop. This, then, is a classic instance of dilution by tarnishing (associating the Victoria’s Secret name with sex toys and lewd coffee mugs) and by blurring (linking the chain with a single, unauthorized establishment.
The Supreme Court later reversed, finding that the trial and appellate court use of the tarnishing and blurring standard to be inappropriate. The correct standard to be applied under the statute is actual dilution.
The Moseleys did not dispute Victoria’s Secret as being a famous mark. Since Victoria’s Secret did not appeal the portion of the trial court ruling finding no trademark infringement, the Supreme Court had to assume that there was no significant competition between the two stores.
Under the FTDA, the owner of a famous mark is entitled to injunctive relief against another person’s commercial use of the mark only if that use “”causes dilution of the distinctive quality”” of the famous mark. A mere likelihood of dilution is not enough under the federal statute.
The Supreme Court agreed that evidence of actual lessening of the capacity of a famous mark to identify and distinguish goods may be difficult to obtain. “”Whatever difficulties of proof may be entailed, they are not an acceptable reason for dispensing with proof of an essential element of a statutory violation,”” the court concluded.
This is the first case to reach the Supreme Court under the FTDA that was passed in 1995. Moselely et. al. d/b/a Victor’s Little Secret v. V Secret Catalogue, Inc., et al.
