The Supreme Court said Victoria’s Secret (above) had not proved that a Kentucky sex-toy shop had infringed on its trademark.

The Supreme Court on Tuesday ruled against Victoria’s Secret’s claim that a small sex-toy shop called Victor’s Secret had infringed on its trademark.

WASHINGTON — Victor might be able to keep his little secret a little longer.

This story first appeared in the March 5, 2003 issue of WWD. Subscribe Today.

The Supreme Court on Tuesday ruled against Victoria’s Secret’s claim that a small Kentucky lingerie and sex-toy shop called Victor’s Secret had infringed on the national lingerie chains’ trademark.

But Victoria’s Secret will have another shot at proving its case.

The High Court sent the matter back to a lower federal court with some guidance: Federal law requires evidence of “dilution” to a trademark name beyond “the mere fact that consumers mentally associate the junior users’ mark with a famous mark,” as Victoria’s Secret had claimed.

However, the nine justices, in an unanimous opinion, shed few details as to what level of proof is needed to show a violation of the 1995 Federal Trademark Dilution Act. That law added new protections for famous trademarks so companies could quickly stop a look-alike name or logo from trading on the reputation or tarnishing the image of an established company.

Federal courts have offered varying interpretations of how the law’s “dilution” standard can be proved.

For example, the 6th Circuit Court of Appeals, said Victor’s Secret’s similarity to Victoria’s Secret is enough proof of dilution. Even store owners Victor and Cathy Moseley’s changing of the name to “Victor’s Little Secret” wasn’t enough to avoid a violation, the appeals court ruled.

“While no consumer is likely to go to the Moseleys’ store expecting to find Victoria’s Secret’s Miracle Bra, consumers who hear the name Victor’s Little Secret likely automatically think of the more famous store and link it to the Moseleys’ adult-toy, gag-gift and lingerie shop,” the appeals court ruled.

Proving economic harm is one means to prove dilution, the Supreme Court noted in its Tuesday decision, but a show of economic harm isn’t essential.

Limited Brands, the parent company of Victoria’s Secret, had a mixed reaction to the Supreme Court’s decision.

“Although we would obviously have preferred for the Court to rule in our favor on all points, we are gratified that it noted the unquestionable strength and value of the Victoria’s Secret brand and trademark,” the company said in a statement. “In addition, the Court agreed with our primary argument that proof of actual economic harm is not required to establish trademark dilution under federal law. We will continue to vigorously protect and defend the Victoria’s Secret brand, and the Court’s decision allows us to do that.”

The High Court’s ruling counters a 4th Circuit Court of Appeals ruling in 1999 that said Ringling Brothers-Barnum & Bailey Circus, which uses the slogan “The Greatest Show on Earth,” had to prove economic harm in its trademark infringement case against Utah’s use of “The Greatest Snow on Earth” on state license plates. The circus didn’t meet that test, the court ruled.

Stephen Colangelo, a Washington trademark attorney who represented the circus in that case, said the Supreme Court’s Victoria’s Secret decision “gives some guidance but very little” as to what the proper measure of dilution might be. He called the High Court’s decision “disappointing.”

He continued: “The Court said the fact there is a mental association between names is not enough. I think the Court is telling the lower courts to go back and work on this a little bit longer. It’s still possible for Victoria’s Secret to prevail.”

New York trademark attorney Ethan Horwitz said Victoria’s Secret should have no problem providing evidence via expert witnesses as to how its trademark may have been blemished by Victor’s Secret.

Horwitz said the Supreme Court went down the “middle of the road” in its ruling by not offering its own standards of “dilution,” which, he said, was a positive outcome for trademark holders.

“The big fear was they would make it more difficult” to prove dilution, said Horwitz, who successfully defended Pepperidge Farm’s trademarked Goldfish crackers in 1999 when Nabisco came out with its own fish-shaped snack. In that case, the 2nd Circuit Court of Appeals ruled Pepperidge Farm only had to prove likelihood of dilution.

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