A legal case stemming from a lawsuit filed by Victoria’s Secret against an adult novelty store with a similar-sounding name, has sparked legislation that allows trademark owners to successfully sue those who use identical or sound-alike names.
The measure, which was approved by the House last week by a voice vote and sent to the President for his signature, was sparked by a suit filed by Victoria’s Secret against the Victor’s Secret adult novelty store in Elizabethtown, Ky, the Washington Post reported.
The Supreme Court ruled in 2003 against the lingerie chain claiming that it did not prove that the adult store’s name had diluted the value of its trademarked name or caused a loss of business.
But the bill’s sponsor, Rep. Lamar Smith, R-Texas, said the ruling was contrary to Congress’ intent in approving the law protecting trademark holders from those using knock-off names.
The measure allows the owner of a trademark, especially one that is widely recognized by the general public, to seek an injunction against those who use of an identical or similar mark likely to cause confusion by diminishing its distinctiveness or tarnishing its image.
The legislation was amended by the Senate earlier this year after it originally passed the house in 2005. The final version lets trademark owners to seek damages on those who willfully intended to trade on the recognition of a famous mark.
But the bill, its backers say, protects First Amendment rights by exempting the use of trademarks for noncommercial purposes like parodies, criticisms or news reporting.
