Victor, Victoria, Whatever—Just Give Me That WonderBra, Dammit!


In a case that "raises the bar for companies claiming trademark dilution," the US Supreme court ruled in favor of a small-time lingerie shop and against lacy juggernaut Victoria's Secret. Reports USA Today:

WASHINGTON ? Five years ago, an Army colonel at Fort Knox, Ky., saw an ad for a nearby "Victor's Secret" lingerie and sex-toy store and alerted Victoria's Secret that its trademark was being used to promote "tawdry" goods.

Victoria's Secret sued shop owner Victor Moseley for "dilution" of its famous mark. Lower federal courts ruled for the international lingerie company, forcing Moseley to rename the shop.

But in a decision Tuesday that raises the bar for companies claiming trademark dilution, the U.S. Supreme Court ruled unanimously that companies must show "actual" dilution in the quality of their mark, not only that it likely would be weakened.

The real question here–one not addressed by the court–is how a lingerie shop called "Victor's Secret" ever managed to stay in business. After Victoria's Secret originally sued, the owner changed the name to "Victor's Little Secret," which is even worse. (The Elizabethtown, Kentucky store is now called Cathy's Little Secret).

The ruling says that trademark owners don't need to show actual economic damages. They need only show that an infringer screws with the "capacity of a famous mark to identify and distinguish goods or services."

It's an interesting decision coming from a Supreme Court that recently ruled in favor of the big guys in Eldred v. Ashcroft, which OK'ed massive extensions in copyright terms. There may be no consistent judicial philosophy at work here, but at least this new ruling expands expression.