Mike Irwin
March 4, 2003, 02:37 PM
This could end up affecting the ongoing dustup between Brownell's and Midway over their respective gunsmithing catalogs...
From Reuters.
WASHINGTON (Reuters) - The U.S. Supreme Court (news - web sites)
ruled on Tuesday that Victoria's Secret, the intimate apparel retailer and
catalog company, has failed to prove its trademark was harmed by a store
called "Victor's Little Secret" that sells lingerie, sex toys and adult videos.
The high court unanimously reversed a ruling
that the trademark of the giant retailer, which
has become famous for its scantily clad models
wearing lingerie, had been diluted.
In 1998, Victoria's Secret, a unit of Columbus,
Ohio-based Limited Brands Inc., sued the
owners of the store located in a shopping
center in Elizabethtown, Kentucky. The store's
slogan is, "Everything for Romantic
Encounters."
When owners Victor and Cathy Moseley
opened their business in 1998, they called it
"Victor's Secret." After the operator of the mail
catalog business and retail stories complained,
the owners changed the name to "Victor's Little
Secret."
Victoria's Secret went to court, claiming its trademark had been diluted. A
federal judge agreed, ruling the name was sufficiently similar to Victoria's
Secret and that it had a "blurring" and "tarnishing effect."
A U.S. appeals court upheld the decision.
"While no consumer is likely to go to the Moseleys' store expecting to find
Victoria's Secret's famed Miracle Bra, consumers who hear the name
'Victor's Little Secret' are likely automatically to think of the more famous
store and link it to the Moseleys' adult-toy, gag gift, and lingerie shop," it
said.
Justice John Paul Stevens said the appeals court was wrong. He said the
evidence was insufficient to support summary judgment for Victoria's Secret
on trademark dilution.
"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," he wrote.
Stevens said the law, which protects against uses that blur a famous
trademark's distinctiveness or tarnish or disparage it, required proof of actual
dilution. The appeals court said only proof of a likelihood of dilution was
needed.
The ruling marked the first time the court has considered the 1996 Federal
Trademark Dilution Act, which gives the holders of famous trademarks the
right to sue to stop trademark dilution.
Victoria's Secret said more than 3.5 million Kentucky residents get its
lingerie catalog each year, including 39,000 in Elizabethtown. It said it has
two stores in Louisville, which is about 60 miles from Elizabethtown.
The Supreme Court sent the case back to the lower courts for further
proceedings.
In a separate concurring opinion, Justice Anthony Kennedy said an
injunction still could be entered for Victoria's Secret if the company
presented enough evidence of either blurring or tarnishing of its trademark.
From Reuters.
WASHINGTON (Reuters) - The U.S. Supreme Court (news - web sites)
ruled on Tuesday that Victoria's Secret, the intimate apparel retailer and
catalog company, has failed to prove its trademark was harmed by a store
called "Victor's Little Secret" that sells lingerie, sex toys and adult videos.
The high court unanimously reversed a ruling
that the trademark of the giant retailer, which
has become famous for its scantily clad models
wearing lingerie, had been diluted.
In 1998, Victoria's Secret, a unit of Columbus,
Ohio-based Limited Brands Inc., sued the
owners of the store located in a shopping
center in Elizabethtown, Kentucky. The store's
slogan is, "Everything for Romantic
Encounters."
When owners Victor and Cathy Moseley
opened their business in 1998, they called it
"Victor's Secret." After the operator of the mail
catalog business and retail stories complained,
the owners changed the name to "Victor's Little
Secret."
Victoria's Secret went to court, claiming its trademark had been diluted. A
federal judge agreed, ruling the name was sufficiently similar to Victoria's
Secret and that it had a "blurring" and "tarnishing effect."
A U.S. appeals court upheld the decision.
"While no consumer is likely to go to the Moseleys' store expecting to find
Victoria's Secret's famed Miracle Bra, consumers who hear the name
'Victor's Little Secret' are likely automatically to think of the more famous
store and link it to the Moseleys' adult-toy, gag gift, and lingerie shop," it
said.
Justice John Paul Stevens said the appeals court was wrong. He said the
evidence was insufficient to support summary judgment for Victoria's Secret
on trademark dilution.
"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," he wrote.
Stevens said the law, which protects against uses that blur a famous
trademark's distinctiveness or tarnish or disparage it, required proof of actual
dilution. The appeals court said only proof of a likelihood of dilution was
needed.
The ruling marked the first time the court has considered the 1996 Federal
Trademark Dilution Act, which gives the holders of famous trademarks the
right to sue to stop trademark dilution.
Victoria's Secret said more than 3.5 million Kentucky residents get its
lingerie catalog each year, including 39,000 in Elizabethtown. It said it has
two stores in Louisville, which is about 60 miles from Elizabethtown.
The Supreme Court sent the case back to the lower courts for further
proceedings.
In a separate concurring opinion, Justice Anthony Kennedy said an
injunction still could be entered for Victoria's Secret if the company
presented enough evidence of either blurring or tarnishing of its trademark.