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Trademark Law

6th Circuit Rules Against Victor’s Little Secret in Trademark Case

Posted May 20, 2010 9:54 AM CDT
By Debra Cassens Weiss

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A federal appeals court has upheld an injunction barring the owner of a lingerie and sex-toy shop from calling his business "Victor's Secret" or "Victor's Little Secret."

The 2-1 ruling (PDF) by the Cincinnati-based 6th U.S. Circuit Court of Appeals is one of the first tests of a new law that makes it easier to sue in trademark cases, the Cincinnati Enquirer reports. The law eliminated a requirement that a trademark holder must prove the defendant actually cost it money, according to the Associated Press.

“If Victor's got a little secret, he'll have to keep it to himself,” AP says.

A federal judge first ordered Victor and Cathy Moseley to stop using the Victor’s Secret name for their Kentucky business in 1998, but the U.S. Supreme Court reversed and remanded in 2003. The high court said Victoria's Secret cannot win its case unless it proves “actual harm” rather than a mere “likelihood of tarnishment.” The new law passed in 2006 was intended to overturn the Supreme Court ruling, How Appealing says.

The 6th Circuit considered the "dilution by tarnishment" claim under the new law. “We conclude that the new act creates a kind of rebuttable presumption, or at least a very strong inference, that a new mark used to sell sex-related products is likely to tarnish a famous mark if there is a clear semantic association between the two,” the court said. “That presumption has not been rebutted in this case.”

Victor Moseley told the Enquirer that the law goes too far to protect big business. "What it boils down to is the big corporations trying to crush the little guys," Moseley said. "If somebody doesn't stand up against them, they're going to ride roughshod over us." He plans to appeal.

His store is now called “Cathy’s Little Secret.”

Hat tip to The BLT: The Blog of Legal Times and How Appealing.

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