Issue 55 | March 5, 2003
Supreme Court Decides Victoria's Secret Case
 Actual dilution, not just a likelihood of dilution, must be shown in order to prevail.

The United States Supreme Court decided the Victoria's Secret case on February 4, 2003, Moseley et al., d/b/a Victor’s Little Secret v. V Secret Catalog, Inc., et al., holding that actual dilution, not just a likelihood of dilution, must be shown in order to prevail in a claim brought under the Federal Trademark Dilution Act (FTDA). A link to the Supreme Court’s opinion can be found at http://www.supremecourtus.gov/opinions/02pdf/01-1015.pdf.

The FTDA, contained in Section 43 of the Lanham Act, allows the owner of a famous mark to enjoin another person’s commercial use of a mark, “if such use begins after the mark has become famous and causes dilution.” 15 U.S.C. § 1125(c). In order to protect businesses from injuries to business reputation (tarnishment) and dilution to the distinctive quality of trademarks (blurring), many sate trademark dilution laws protect against a “likelihood” of harm. In contrast, the Supreme Court took note of the legislative history of the FTDA setting forth that the statute’s purpose was to protect against subsequent uses, and held that the statutes “causes dilution” language required a showing of actual harm.

Since no evidence of actual harm was contained in the record before the Supreme Court, summary judgment against Victor's Little Secret with regard to the dilution claim was reversed and the case was remanded to the District Court. At the District Court level, Victoria's Secret will now have to develop and introduce proof of actual harm to its famous trademark in order to prevail.

James M. McCarthy is a partner at the law firm of McDonnell Boehnen Hulbert & Berghoff. The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.