'Victoria's Secret' case tests the power of a name
Supreme Court will weigh the 'dilution' standard
By William Mears
CNN
WASHINGTON (CNN) -- The subject matter in a case before the Supreme Court next week may be racy, but for the parties involved it is strictly business.
In a case testing the nation's trademark infringement laws, a small Kentucky business will make its arguments against lingerie heavyweight Victoria's Secret Tuesday before the high court. At issue is whether the federal Trademark Dilution Act gives undue protection to holders of a "famous" trademark.
The case involves a business once called Victor's Secret that continues to sell "adult novelty" and "wild outfits." The owners of the mom-and-pop store claim the name was inspired by Victor Moseley's desire to keep the business secret from a former employer. Nevertheless, the Columbus, Ohio-based lingerie manufacturer Victoria's Secret, which claimed unfair competition and trademark infringement, sued him.
The store changed its name to Victor's Little Secret, but when that failed to satisfy the larger company, the Kentucky store changed its name to Cathy's Little Secret, after the owner's wife.
A federal appeals court upheld a lower court ruling, affirming trademark infringement by saying the name "Victor's Little Secret" would make the public think of the well-known catalog brand.
The case involves the legal standard called "dilution," which the federal government interprets as "the lessening of the capacity of a famous mark to identify and distinguish goods and services."
Victor and Cathy Moseley claim Victoria's Secret does not have a "distinctive quality" because many lingerie stores and companies use "secret" as part of their advertising. They also claim federal trademarks laws require "objective proof of actual injury," not subjective standards of dilution.
The appeals court ruled dilution can exist even before economic damages are suffered, which were the reason the federal law was strengthened. Previous federal court rulings have differed widely, owing perhaps to the subjective nature of trademarks. The court here may settle once and for all just what it takes to prove trademark dilution.
The trademark case is Moseley v. Victoria's Secret Catalogue, 01-1015.
