U.S. Supreme Court Releases Decision in Victoria Secret

In a reversal of the conclusions of two lower courts, the U.S. Supreme Court (USSC) recently held that a party's use of the mark VICTOR'S SECRET did not dilute the quality of the mark VICTORIA'S SECRET for the purpose of relief under the U.S. Federal Trademark Dilution Act (FTDA). The USSC based its decision on the requirement that actual dilution must be established by evidence, holding that there was a complete absence of evidence of any lessening of the capacity of the VICTORIA'S SECRET mark to identify and distinguish goods or services sold in Victoria's Secret stores or advertised in its catalogues. Despite the existence of evidence that an actual person did make a mental association with Victoria's Secret upon reading an advertisement for the opening of a store named Victor's Secret, the Court said that the mere fact that consumers mentally associate the junior user's mark with a famous mark is not sufficient to establish actionable dilution. The reach of this decision is even farther than it might first appear. The FTDA is often relied on in domain name disputes. Because of this decision, it is likely that proof will now be required in order to claim that a similar domain name has caused "dilution" of a trademark and as such, it will likely no longer be sufficient to rely on a consumer's recognition of a word or phrase as a trademark. For a copy of the case, visit: http://www.supremecourtus.gov/opinions/02pdf/01-1015.pdf For a copy of the Federal Trademark Dilution Act, visit: http://www4.law.cornell.edu/uscode/15/1125.html Concerned about your company's trade-marks? Contact Marijo Coates (mcoates@dww.com) or Hung Nguyen (hnguyen@dww.com) of DWW.