On May 19th, 2010, the Court of Appeals for the Sixth Circuit decided the next, and perhaps final, chapter in the hallmark Victoria’s Secret Catalogue v. Moseley trademark dilution case, which began back in 1998.[1] In the long history of this legal battle, both parties to the case have won during at least one of the trials leading up to the May 19th decision. This case was so monumental that during its litigation it even elicited Congressional attention after its Supreme Court holding. That attention led to a revision of U.S. trademark law. The importance of this decision rests in its ability to clarify and solidify the legal requirements and standard of proof for trademark dilution by tarnishment in cases where the new trademark is used in the sale of products of a sexual nature.

In the city of Elizabethtown, Kentucky, Victor and Cathy Moseley opened a retail adult-oriented store which they named “Victor’s Secret.”[2] This store sold adult videos, lingerie, and “sex toys.” In February of 1998, a concerned citizen and Victoria’s Secret devotee promptly notified Victoria’s Secret of the Moseleys’ store upon seeing an ad in a weekly periodical.[3] Upon request by Victoria’s Secret to change the name, the Moseleys renamed their store “Victor’s Little Secret.” However, this change was not distinctive enough in contrast to the Victoria’s Secret brand name and suit was filed for injunctive relief to prevent the Moseleys from using that name for their store. The District Court granted that request for an injunction against the Moseleys, who appealed the case all the way up to the U.S. Supreme Court.[4] The Supreme Court, applying the dilution statute as it existed at that time, held that dilution by tarnishment required “actual harm” and not just “likelihood of tarnishment.”[5] It further stated that the holder of the famous trademark was saddled with the burden of showing that harm.[6] The Supreme Court remanded the case for a determination on those issues. In response to the Supreme Court’s holding and prior to a second decision by the District Court, Congress revised the dilution statute to specifically state that the standard of proof for dilution of a trademark is “likelihood of dilution,” not a showing of actual dilution.[7] Upon remand and applying the new law, the District Court found in favor of Victoria’s Secret, and the Moseleys appealed.

This was the state of the case when it reached the Court of Appeals for the Sixth Circuit. A three judge panel had to decide, due to the sexual nature of the products sold at “Victor’s Little Secret,” whether tarnishment could be shown assuming all other elements of dilution were proven. In six jurisdictions, the Court found eight federal cases that held a mark was tarnished by semantic similarity to a trademark that was used in the sale of sex-related goods.[8] Finding no cases to the contrary, the court concluded that tarnishment could in fact be shown provided all other elements of dilution were proven.

Furthermore, the Sixth Circuit Court found that, in cases involving sex-related products, a “rebuttable presumption” is created that famous marks are likely to be tarnished by semantically similar junior marks.[9] Additionally, the burden to rebut that presumption was placed on the owner of the junior mark. Finding that the Moseleys had not presented any evidence to rebut that presumption, the court affirmed the lower court’s decision, which had found in favor of Victoria’s Secret.[10]

In the end, Victoria’s Secret protected its famous trademark from dilution by tarnishment, and the Moseleys renamed their store “Cathy’s Little Secret.”[11] In this case, the Court further solidified the view that dilution by tarnishment can occur when a junior trademark is semantically similar and used in the sale of sex-related products. However, it went slightly beyond that by applying the term “rebuttable presumption” to dilution by tarnishment in cases where a junior trademark was used in the sale of products of a sexual nature. While the Court points out that the presumption can be rebutted in the form of “expert testimony or surveys or polls or customer testimony,”[12] not presenting evidence to do so precludes the court from finding in favor of the junior mark.[13] With the May 19th decision, this prominent case in U.S trademark law may finally have come to an end.

[1] V Secret Catalogue, Inc. v. Moseley, No. 08-5793 (6th Cir. May 19, 2010).

[2] V Secret Catalogue, Inc., No. 08-5793, slip op. at 2.

[3] Id. at 4.

[4] Id. at 2.

[5] Id. at 5.

[6] Id.

[7] Id. at 6.

[8] Id. at 7.; Pfizer Inc. v. Sachs, 652 F. Supp. 2d 512, 525 (S.D.N.Y. 2009); Williams-Sonoma, Inc. v. Friendfinder, Inc., No. C 06-6572 JSW (MEJ) , 2007 WL 4973848, at *7 (N.D. Cal., Dec. 6, 2007); Kraft Foods Holdings, Inc. v. Helm, 205 F. Supp. 2d 942, 949-50 (N.D. Ill. 2002); Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F. Supp. 2d 1339, 1355 (S.D. Fla. 2001); Mattell, Inc. v. Internet Dimensions Inc., 55 U.S.P.Q.2d 1620, 1627 (S.D.N.Y. 2000); Polo Ralph Lauren L.P. v. Schuman, 46 U.S.P.Q.2d 1046, 1048 (S.D Tex. 1998); Pillsbury Co. v. Milky Way Prods., Inc., 215 U.S.P.Q. 124, 135 (N.D. Ga. 1981); Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 467 F. Supp. 366, 377 (S.D.N.Y. 1979).

[9] V Secret Catalogue, Inc., No. 08-5793, slip op. at 8.

[10] Id. at 11.

[11] Actually, the Moseleys renamed their store following the district court’s initial injunction.

[12] Id. at 8.

[13] Id.; The Moseleys did not present any evidence to rebut that presumption in either of their two visits to the district court.