Supreme Court Docket Report - 2001 Term, Number 13 / April 15, 2002

Co-authored by Ms Miriam R. Nemetz & Mr Andrew H. Schapiro

The Supreme Court granted certiorari in one case of potential interest to the business community. Amicus briefs in support of the petitioners are due on Thursday, May 30, 2002, and amicus briefs in support of the respondents are due on Monday, July 1, 2002.

Trademarks - Dilution - Actual Injury. The Federal Trademark Dilution Act ("FTDA"), 15 U.S.C. 1125(c), permits the owner of a famous mark to obtain an injunction against another party's commercial use of a mark or trade name that "causes dilution of the distinctive quality of the [famous] mark." The Supreme Court granted certiorari in Victor Moseley and Cathy Moseley, d/b/a Victor's Little Secret v. V Secret Catalogue, Inc., et al., No. 01-1015, to determine whether a showing of actual injury to the famous mark is a necessary element of a claim for relief under the FTDA.

V Secret Catalogue, Inc. owns the "Victoria's Secret" mark, which it licenses to Victoria's Secret Catalogue, LLC and Victoria's Secret Stores, Inc. ("Victoria's Secret"). Victoria's Secret, which sells women's lingerie and clothing, operates over 750 stores and distributes 400 million copies of its catalogue each year. In February 1998, Victor and Cathy Moseley opened a store called "Victor's Secret," which sold lingerie, adult videos, sex toys, and "adult novelties." Shortly after the store opened, Victoria's Secret sent the Moseleys a letter asking them to cease and desist their use of the name "Victor's Secret." Thereafter, the Moseleys changed the name of their store to "Victor's Little Secret." The word "Little" appeared in small font above the original "Victor's Secret" logo.

Victoria's Secret sued the Moseleys in federal district court, alleging trademark infringement and trademark dilution. The district court rejected the infringement claim on the ground that there was no likelihood of confusion between the two marks. However, it ruled in favor of Victoria's Secret on its dilution claim, concluding that the Moseleys' mark was sufficiently similar to the Victoria's Secret mark to blur the senior mark's product identification and tarnish it with the junior mark's more "risqu" inventory. Accordingly, the district court enjoined the Moseleys from using the designation "Victor's Little Secret" or any other similar mark.

The Sixth Circuit affirmed. 259 F.3d 464. The principal issue in the appeal was "whether a plaintiff must prove actual, present injury to...