V Secret Catalogue, Inc. v. Moseley

Victor and Cathy Moseley (the defendants) owned a local store that sold sex toys named “Victor’s Little Secret.” V Secret Catalogue, Inc. (the plaintiff) was an international lingerie company that operated under the name “Victoria’s Secret.” The plaintiffs sued for trademark dilution by tarnishment, alleging that the tawdry nature of the goods sold at Victor’s Little Secret reduced Victoria’s Secret’s selling power by causing consumers to have less positive associations with the Victoria’s Secret mark.

At trial, the plaintiff submitted an affidavit from a man who saw an ad for Victor’s Little Secret and was dismayed to see a store trading on Victoria’s Secret’s more respectable name to sell such unwholesome merchandise. Additionally, the plaintiff submitted a statement from one of its executives explaining that the plaintiff maintained a “sexy and playful” image that steered clear of things that were “sexually explicit or graphic.” The defendants did not present any evidence that their store’s name was unlikely to tarnish the plaintiff’s mark.

The district court found for the plaintiff and issued an injunction prohibiting the defendants from using “Victor’s Little Secret” to name their store. The defendants appealed, and the appellate court affirmed. The United States Supreme Court reversed the appellate court, holding that a trademark-dilution claim requires plaintiffs to present evidence of actual dilution and that the plaintiff failed to present such evidence.

In response to the Supreme Court’s ruling, Congress passed the Trademark Dilution Revision Act of 2006 (TDRA). The TDRA made trademark dilution by tarnishment actionable if the trademark holder could show that the defendant’s use of the mark was likely to cause dilution of the trademark holder’s reputation. On remand, the district court ruled for the plaintiffs. The defendants appealed.