WASHINGTON — Supreme Court justices wrestled with a case Tuesday pitting chic lingerie chain Victoria’s Secret against a Kentucky lingerie and sex-toy shop called Victor’s Secret, in a test that could change the scope of trademark protections.
Attorneys for Victoria’s Secret, the global intimate-apparel chain, argued that Victor’s Secret, a shop in a retail strip mall, illegally confuses consumers familiar with Victoria’s Secret. As a result, Victoria’s Secret maintains its name has been illegally used in violation of federal protections granted well-known brands under the Federal Trademark Dilution Act.
At issue is whether Victoria’s Secret has to prove it has been financially harmed by the presence of a business with a similar name, such as Victor’s Secret.
“There needs to be objective evidence that consumers in fact are confused,” James M. Higgins Jr., attorney for Victor’s Secret, told the High Court’s nine justices.
However, Victoria’s Secret attorney Walter Dellinger Jr. said the mere use of a similar name is enough to prove “dilution,” since a trademarked famous name is presumed to hold value.
“By the time you show economic harm” then further damage occurs, he said. “This is a very narrow statute that protects only famous marks.”
When Victor Moseley and his wife, Cathy, opened Victor’s Secret in 1998, he didn’t envision doing battle with a worldwide retail operation owned by The Limited. The Moseleys used their savings and credit cards to start the Elizabethtown, Ky., boutique with the slogan: “Everything For Romantic Encounters.”
Victoria’s Secret complained within two weeks of the store opening that the Moseleys were illegally using a similar name in order to bring in business. The Moseleys shot back that they were simply using one of the owner’s first names and the use of “secret” was meant as an inside joke. They decided to change the store’s name to Victor’s Little Secret, but Victoria’s Secret said that wasn’t enough.
A federal judge and an appeals court next sided with Victoria’s Secret, and the store’s name was ordered altered. It is now called Cathy’s Little Secret.
At the center of the case is the trademark act’s wording, which gives famous names the right to defend against “another person’s commercial use in commerce of a mark or trade name, if such use…causes dilution of the distinctive quality of the mark.”
Justice Sandra Day O’Connor wondered whether “actual confusion” among consumers was needed in order to prove a trademark name’s “dilution,” although she later noted “the statute doesn’t mention economic harm, per se.”
Justice Antonin Scalia questioned how a measure of “dilution” could be developed. “What is enough?” Scalia asked, then wondered, “What do you ask these consumers?”
Higgins replied that measures of consumer perception aren’t difficult to develop. For example, he said consumers could be asked if a name evoked a more famous brand name.
Justice David Souter pondered whether narrow proof of “dilution” could suppress commercial speech. “There is a pretty significant speech interest here,” Souter said.
He questioned why a distinction has not been made to allow similar trademarked names like Delta Airlines and Delta Faucets. “What about Ford Motor Company and Ford Modeling?” Souter asked.
The case is expected to be decided by spring.