Cengage Advantage Books: Foundations of the Legal Environment of Business 3rd Edition by Marianne Jennings

تمرين 13

Moseley, dba Victor's Little Secret v. V Secret Catalogue, Inc. 537 U.S. 418 (2003)
The Bare Essentials on Trademark Law: Victor or Victoria's Secret?
Facts
Victor and Cathy Moseley (petitioners) owned and operated an adult toy, gag gift, and lingerie shop that they called Victor's Little Secret near Elizabethtown, Kentucky. In the February 12, 1998, edition of a weekly publication distributed to residents of the military installation at Fort Knox, Kentucky, the Moseleys advertised the "GRAND OPENING Just in time for Valentine's Day!" of their store "VICTOR'S SECRET" in Elizabethtown. The ad featured "Intimate Lingerie for every woman"; "Romantic Lighting"; "Lycra Dresses"; "Pagers"; and "Adult Novelties/Gifts."
An army colonel, who saw the ad and was offended by what he perceived to be an attempt to use a reputable company's trademark to promote the sale of "unwholesome, tawdry merchandise," sent a copy to Victoria's Secret, Inc. (respondents).
Victoria's Secret owns 750 stores around the country and distributes 400 million catalogs each year via U.S. mail. Victoria's Secret spends $55 million annually on advertising "the VICTORIA'S SECRET brand-one of moderately priced, high quality, attractively designed lingerie sold in a store setting designed to look like a wom[a]n's bedroom." Legal counsel for Victoria's Secret asked the Moseleys to stop using the name Victor's Secret because of possible confusion over the trademark and resulting dilution. The Moseleys changed the name of their store to Victor's Little Secret. Not satisfied, Victoria's Secret filed suit for dilution of its trademark under the Federal Trademark Dilution Act (FTDA).
The District Court granted summary judgment for Victoria's Secret under the FTDA, and the Sixth Circuit affirmed, finding that the respondents' mark was " distinctive" and that the evidence established " dilution" even though no actual harm had been proved. The Moseleys appealed.
Judicial Opinion
STEVENS, Justice
Respondents described their business as follows:
"Victoria's Secret stores sell a complete line of lingerie, women's undergarments and nightwear, robes, caftans and kimonos, slippers, sachets, lingerie bags, hanging bags, candles, soaps, cosmetic brushes, atomizers, bath products and fragrances." Petitioners sell a wide variety of items, including adult videos, "adult novelties," and lingerie. In answer to an interrogatory, petitioners stated that they "sell novelty action clocks, patches, temporary tattoos, stuffed animals, coffee mugs, leather biker wallets, zippo lighters, diet formula, diet supplements, jigsaw puzzles, whips, handcufs [ sic ], hosiery bubble machines, greeting cards, calendars, incense burners, car air fresheners, sunglasses, ball caps, jewelry, candles, lava lamps, blacklights, fiber optic lights, rock and roll prints, lingerie, pagers, candy, adult video tapes, adult novelties, t-shirts, etc."
The term 'dilution' means the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of-
(1) competition between the owner of the famous mark and other parties, or
(2) likelihood of confusion, mistake, or deception The record in this case establishes that an army officer who saw the advertisement of the opening of a store named "Victor's Secret" did make the mental association with "Victoria's Secret," but it also shows that he did not therefore form any different impression of the store that his wife and daughter had patronized.
There is a complete absence of evidence of any lessening of the capacity of the VICTORIA'S SECRET mark to identify and distinguish goods or services sold in Victoria's Secret stores or advertised in its catalogs. The officer was offended by the ad, but it did not change his conception of Victoria's Secret. His offense was directed entirely at petitioners, not at respondents. Moreover, the expert retained by respondents had nothing to say about the impact of petitioners' name on the strength of respondents' mark.
The evidence in the present record is not sufficient to support the summary judgment on the dilution count. The judgment is therefore reversed.
Case Questions
1. Why was the connection the Army officer made between the two companies not enough for dilution?
2. What is Victoria's Secret concerned about?
3. What does Victoria's Secret have to prove to get an injunction under the FTDA?