4
Mar/03

Victor's Little Secret Wins. Actual Dilution is Required. Unanimous!!


The owners of the VICTORIA’S SECRET trademark failed to establish that an adult novelties store named first VICTOR’S SECRET and then VICTOR’S LITTLE SECRET diluted its trademark. Decison here.  Background here.

As to whether the standard under the FTDA should be actual dilution or likelihood of dilution, the Lanham Act says “causes dilution” not, “causes dilution or likelihood of dilution.”  So that’s that.

Also important : the Court implies that the junior mark does not have to be identical to dilute.

Also important: “. . . mental association will not necessarily reduce the capacity of the famous mark to identify the goods of the owner, the stautory requirement for dilution under the FTDA . . . ‘Blurring’ is not a necessary consequence of mental association. (Nor, for that matter, is tarnishing.’) (pg. 15).

Now the process of amending the law begins.

UPDATE:  SCOTUSBlog, provides commentary on the decision here and a different Marty at SCOTUS discusses the decision further here.  I do agree with his comment that this Court is hostile, not so much to dilution, but to the tautological manner in which dilution has been proven until now.   BUICK SHOE POLISH is dilutive because BUICK SHOE POLISH is an example of dilution.  I do not agree that the Court thought that VICTORIA’S SECRET is less deserving of protection because it consists of dictionary words.  The problem in this case was not the fame of the mark VICTORIA’S SECRET.  The problems were (imho) that defendant’s mark was no longer VICTOR’S SECRET but VICTOR’S LITTLE SECRET, and that it is expensive to prove dilution, assuming it really exists.

Vintage undies picture from here.

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