South-Western Legal Studies in Business

Trademark Dilution Requires Proof of Injury
Description Supreme Court held that to sustain a claim of trademark dilution under the Federal Trademark Dilution Act, a plaintiff must prove actual dilution by establishing economic injury to the mark, rather than just assert a likelihood of dilution.
Topic Intellectual Property
Key Words Trademark; Dilution; Infringement; Federal Trademark Dilution Act
C A S E   S U M M A R Y
Facts “Victoria’s Secret” operates over 750 stores nationwide. It sent a letter to a store in Kentucky called “Victor’s Secret” that sold “intimate lingerie” and “adult novelties” demanding that Victor’s cease using that name, as it damaged the Victoria’s Secret trademark. Victor’s changed its name to “Victor’s Little Secret,” which Victoria’s found unsatisfactory, so it sued for trademark dilution, contending their mark was tarnished by Victor’s use. The district court held that Victor’s violated the Federal Trademark Dilution Act (FTDA) by diluting the Victoria’s Secret trademark. The appeals court upheld the verdict. Victor’s appealed.

Reversed. The FTDA requires a showing of actual dilution, rather than a likelihood of dilution, by objective proof of actual injury to the economic value of a trademark. Victoria’s Secret failed to establish that their famous mark was diluted. There was no evidence of any lessening of the capacity of their mark to identify and distinguish goods sold in their stores or advertised in their catalogs. When plaintiffs prove dilution, they are entitled to injunctive relief against the other party’s commercial use of a mark that causes dilution. However, the fact that consumers may mentally associate the junior mark with a famous mark is not sufficient by itself to establish actionable dilution.

Citation Moseley v. V Secret Catalogue, Inc., 123 S.Ct. 1115 (Sup. Ct., 2003)

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