FORUM
 JURIST >> OPINION >> Forum >> A Trademark Victory... 

覧覧覧覧覧覧覧覧覧覧覧覧覧覧
A TRADEMARK VICTORY FOR THE LITTLE GUY:
VICTORIA'S SECRET AND THE REDEFINITION OF DILUTION

Professor Eugene Quinn
Temple Law School
JURIST Guest Columnist

Dilution is a variety of trademark infringement that protects famous trademarks from situations where there is not a likelihood of confusion, but where the defendant's use of the famous mark either tarnishes the image of the mark (i.e, tarnishment) or blurs the distinctiveness of the mark (i.e., blurring). As a relatively young theory of federal trademark protection, dilution is a theory that continues to grow and which is continually being defined and re-defined by the US courts. On March 4, 2003, the United States Supreme Court issued its much anticipated decision in Moseley v. V. Secret Catalogue, Inc., where the Court held that in order to prevail under the FTDA the plaintiff must show actual dilution and not merely its likelihood.

Much has been written about the fact that previous to the enactment of the FTDA, federal trademark law did not protect trademarks directly. This statement may seem counterintuitive, but the truth is that United States trademark law is aimed at preventing confusion and counterfeiting, all with an eye toward protecting the consumer. To be sure, in order to protect the consumer there is necessarily a benefit that befalls the trademark owner, but this benefit is secondary.

Now enter dilution as a theory. The Federal Trademark Dilution Act (FTDA) became law in 1995 and is codified at 15 U.S.C. 1125(c). The FTDA can be used only by famous marks, which usually means that those companies who are plaintiffs in these types of cases are large, well established companies who have national and global reach. Frequently on the defendant's side of the equation is a small company charged with doing something that allegedly harms the famous trademark. In a victory for the little guy, the United States Supreme Court decided in Moseley that: (1) the Federal Trademark Dilution Act requires proof of actual dilution; and (2) the evidence presented by Victoria's Secret was insufficient to support summary judgment on the dilution count. The impact of this decision is potentially enormous for small business operators who too frequently get told by trademark owners that they must stop what they are doing or suffer the consequences.

Victor and Cathy Moseley, the defendants in this case, owned and operated a retail store named 天ictor痴 Little Secret in a strip mall in Elizabethtown, Kentucky. The plaintiffs, the well-known lingerie and apparel store, owns the VICTORIA 担 SECRET trademark, and operate over 750 Victoria 痴 Secret retail outlets. The plaintiff sued the Moseley痴 in an attempt to force them to stop using the name 天ictor痴 Little Secret, which they claimed would both blur and tarnish their famous mark. The plaintiff, however, had no proof that their mark was in any way harmed, but rather they continually referred to the likelihood of harm. The Supreme Court ruled that the FTDA unambiguously requires an actual harm - in other words, proof that there has been an actual dilution of the distinctiveness of the plaintiff痴 famous mark.

The Supreme Court explained that the mere fact that consumers mentally associate the defendant痴 mark with that of the plaintiff痴 famous mark does not in and of itself provide sufficient evidence to establish actionable dilution. The Court explained that this is true because mental association, without more, does not necessarily reduce the capacity of the famous mark to identify the goods of its owner, which is the statutory requirement for dilution under the FTDA. It is the plaintiff痴 obligation to actually demonstrate that there has in fact been a reduction in the capacity of the famous mark.

The plaintiff in Moseley did not present any evidence that the plaintiff痴 famous mark was injured in any way. While there was evidence that those who saw the advertisements for 天ictor痴 Little Secret did connect the dots and make the mental association with 天ictoria 痴 Secret, there was no evidence that consumers formed any different impression of the store as a result of that mental connection. Therefore, the plaintiff did not prove the essential element, the reduction in capacity of the mark to identify the goods of the famous mark's owner.

The plaintiff and amici argued that the Supreme Court should not require proof of actual dilution because such evidence of an actual lessening of the capacity of a famous mark to identify and distinguish goods or services may be difficult to obtain, and would certainly be expensive and unreliable. The Court, however, correctly pointed out that the difficulty in obtaining evidence is no excuse to deviate from a clear statutory scheme that unambiguously requires completed dilution (i.e., an injury) prior to the existence of a viable dilution cause of action.

In essence, the Supreme Court痴 decision in Moseley has leveled the playing filed in the dilution litigation arena, at least somewhat. Now it will no longer be enough for an owner of a famous trademark to use their might and size to bully small companies without any demonstrative proof that there has been any damage in the first place. It will not longer be enough for a plaintiff to wave around a famous trademark and argue that dilution is certainly likely and an injunction must be issued. Only when the plaintiff can demonstrate some evidence to support its accusations will the defendant be forced to conform to the cease and desist request of the plaintiff. This will hopefully make plaintiffs think twice about resorting to a dilution theory for the sole purpose of scaring defendants into backing off.

The decision seems ultimately reasonable. After all, the plaintiff is in the best position to come forward with evidence to demonstrate it is actually suffering harm, so why not make it actually prove injury like virtually all other plaintiffs in all other areas of law?


Eugene Quinn is currently a Visiting Professor of Law at Temple University School of Law, where he teaches and specializes in the areas of Intellectual Property, Business and Internet Law.

March 6, 2003

GUEST COLUMNIST

JURIST Guest Columnist Eugene Quinn is currently a Visiting Professor of Law at Temple University School of Law. Professor Quinn teaches and specializes in the areas of Intellectual Property, Business and Internet Law, and is a member of the patent bar and admitted to practice in New Hampshire.

Professor Quinn is the author of numerous articles on patent law, copyright law and the Internet. His latest article, titled An Unconstitutional Patent in Disguise, examines the constitutionality of the circumvention prevention measures of the DMCA. He holds an LL.M. in Intellectual Property from Franklin Pierce Law Center; a J.D. from Franklin Pierce Law Center; and a B.S.E.E. from Rutgers University. For his Internet home page, click here.