As part of a five-year battle over the Victoria's Secret trademark, The Supreme Court ruled yesterday that a Kentucky adult retailer that had used the name Victor's Secret had not harmed the trademark of the famous lingerie brand.
Victor and Cathy Moseley opened their store in 1998 the named it Victor's Secret. A army colonel at a nearby base notified Victoria's Secret. The 750-store Victoria's Secret chain complained within weeks prompting the couple to add the word "little" to its sign.
Not satisfied, Victoria's Secret took the Moseley's to court, citing the 1995 Federal Trademark Dilution Act, which was designed to give owners of trademarks protection from dilutions of their brands.
Two federal courts had previously ruled against the family-run store, ruling that Victoria's Secret had established that they were a famous brand and that there was "likely" confusion caused by the adult retailer's similar sounding name.
The Supreme Courts decision ruled that the key issue was that there must be proof that the "trademark" was diluted. That is to say the Victoria's Secret was required to demonstrate that they would suffer actual economic harm if the adult retailer was allowed to keep their name.
"Use of the name 'Victor's Little Secret' neither confused any consumers or potential consumers, nor was likely to do so," Justice John Paul Stevens wrote for the court in the decision.
The fact that a consumer may make the mental association between a famous trademark and a knockoff is not the same thing as showing that the famous name was damaged, Stevens wrote.
The decision is considered a huge victory for small business.
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