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AFTER A DOZEN YEARS IN LITIGATION

After a dozen years in litigation, Victoria's Secret has protected its famous trademark and attained a final victory in the landmark dilution case V Secret Catalogue, Inc. v. Moseley Victoria's Secret first learned in 1998 that Victor and Cathy Moseley operated a store near Louisville, Kentucky called "Victor's Secret" that sold sex toys and explicit videos. In response to the objection by Victoria's Secret, they changed the store name to "Victor's Little Secret," which also was unacceptable. As a result, Victoria's Secret filed a complaint in federal court to prevent the Moseleys from calling their store "Victor's Secret" or "Victor's Little Secret." The lower court found in favor of Victoria's Secret in 2000, and the Sixth Circuit affirmed the decision reported at 259 F.3d 464 (6th Cir. 2001).

Because the appellate decision resulted in a split among the circuits as to whether actual economic harm must be proven, the Supreme Court accepted the case and reversed. The reversal was predicated upon the Court's interpretation of the Federal Trademark Dilution Act of 1995 as requiring a showing of "actual dilution, rather than a likelihood of dilution." This ground-breaking case resulted in Congress amending the statute with the Trademark Dilution Revision Act of 2006 ("TDRA"). The TDRA effectively overturned the Supreme Court's adverse decision by providing that the standard to obtain relief from dilution of a famous mark is likely dilution.

Following remand, the district court determined that the TDRA applied to Victoria's Secret's claim since it only sought injunctive relief and again granted summary judgment to Victoria's Secret based on its finding that the Moseleys' use was likely to cause dilution by tarnishment of the VICTORIA'S SECRET trademark. On the second round of appeals, the Sixth Circuit affirmed. The Moseleys petitioned the Supreme Court for certiorari, but, unlike during the earlier stage of the litigation, no divisions among the courts of appeals existed, and, therefore, the  Court denied certiorari in early 2011. With the Supreme Court's decision not to hear the case, Victoria's Secret now has secured as final the victory it first attained more than ten years ago. Following the decision by the Supreme Court, the Moseleys made a last ditch effort and filed a Petition for Rehearing, which was denied by the Supreme Court in March, 2011.

 

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