Does an adult novelty shop called "Victor's Little Secret" dilute the famous "Victoria's Secret" mark? The recent U.S. Supreme Court case Moseley v. Victoria's Secret Catalogue addressed this issue – with the result that proving dilution of a famous mark is now even more difficult.
Dilution occurs when the ability of a famous mark to identify and distinguish the goods or services it represents is diminished or tarnished by use of another similar mark. Dilution can occur even if there is no market competition between the goods or services used in connection with the marks. For example, dilution rights protect against a third party naming its wheelbarrow "Pepsi" or its carbonated drink "Mattel."
In Moseley, Victoria's Secret sued Victor Moseley, owner of Victor's Little Secret, a store that sold lingerie, adult videos, adult novelties and gag gifts in a strip mall in Kentucky (with lingerie representing only 5 percent of the store's sales). Because of the nature of Moseley's other merchandise, Victoria's Secret claimed that Victor's Little Secret diluted its famous mark and tarnished Victoria's Secret's reputation. In a unanimous decision, the Supreme Court stated that the standard for dilution requires a plaintiff to prove that a new trademark actually causes dilution of the distinctive quality of a famous mark. Contrary to other lower courts' holdings, it is now not enough to claim that a new trademark is merely likely to dilute a famous mark.
Despite this decision, there is still no winner in this case. The Supreme Court remanded the case back to the lower court so the parties can submit additional evidence under this new "actual dilution" standard. Whether Victor or Victoria will prevail remains to be seen.
In light of this case, it is now more difficult for famous mark owners to prevent others in noncompetitive fields from adopting similar marks. This could have broad repercussions both in choosing and in policing trademarks. Please contact us to discuss how this case may affect your trademark portfolio and enforcement strategies.