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plaintiffdefendantappealsummary judgmenttrademarkcorporation
plaintiffdefendanttrademarkcorporation

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V Secret Catalogue, Inc. v. Moseley, 605 F.3d 382, 95 U.S.P.Q.2d 1050

Facts

Affiliated corporations engaged in the sale of lingerie under the trademark 'Victoria's Secret' initiated a trademark infringement and dilution by tarnishment action against an adult novelty store originally named 'Victor's Secret,' later changed to 'Victor's Little Secret.' The District Court granted summary judgment to the corporations on their dilution claim, which was affirmed by the Court of Appeals. However, the Supreme Court reversed and remanded the case, leading to further proceedings in the District Court, which again ruled in favor of the corporations. The adult novelty store appealed, arguing that it did not tarnish the 'Victoria's Secret' mark.

Affiliated corporations engaged in the sale of lingerie under the trademark 'Victoria's Secret' initiated a trademark infringement and dilution by tarnishment action against an adult novelty store originally named 'Victor's Secret,' later changed to 'Victor's Little Secret.'

Issue

Whether the use of the name 'Victor's Little Secret' by the defendants is likely to cause dilution by tarnishment of the 'Victoria's Secret' mark.

Whether the use of the name 'Victor's Little Secret' by the defendants is likely to cause dilution by tarnishment of the 'Victoria's Secret' mark.

Rule

Under the Trademark Dilution Revision Act of 2006, a plaintiff is entitled to injunctive relief if the use of a junior mark is likely to cause dilution by tarnishment of a famous mark. This requires a showing of a clear association between the marks and that the association harms the reputation of the famous mark.

Under the Trademark Dilution Revision Act of 2006, a plaintiff is entitled to injunctive relief if the use of a junior mark is likely to cause dilution by tarnishment of a famous mark. This requires a showing of a clear association between the marks and that the association harms the reputation of the famous mark.

Analysis

The court found that there is a 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. The adult novelty store failed to provide evidence to rebut this inference, and thus the court concluded that the use of 'Victor's Little Secret' was likely to tarnish the 'Victoria's Secret' mark.

The court found that there is a 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. The adult novelty store failed to provide evidence to rebut this inference, and thus the court concluded that the use of 'Victor's Little Secret' was likely to tarnish the 'Victoria's Secret' mark.

Conclusion

The court affirmed the District Court's ruling that the adult novelty store's use of 'Victor's Little Secret' is likely to cause dilution by tarnishment of the 'Victoria's Secret' mark.

The court affirmed the District Court's ruling that the adult novelty store's use of 'Victor's Little Secret' is likely to cause dilution by tarnishment of the 'Victoria's Secret' mark.

Who won?

The prevailing party in this case is Victoria's Secret, as the court upheld the District Court's ruling that the adult novelty store's use of 'Victor's Little Secret' was likely to tarnish the famous 'Victoria's Secret' mark. The court emphasized that the adult novelty store did not provide sufficient evidence to counter the strong inference of tarnishment created by the semantic association between the two marks.

The prevailing party in this case is Victoria's Secret, as the court upheld the District Court's ruling that the adult novelty store's use of 'Victor's Little Secret' was likely to tarnish the famous 'Victoria's Secret' mark.

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