(CN) – A Kentucky sex shop can’t call itself “Victor’s Little Secret” because the name dilutes the trademark of Victoria’s Secret Stores Inc., the 6th Circuit ruled.
Victoria’s Secret claimed the “Victor’s Little Secret” mark – because it is sex related – “disparages and tends to reduce the positive associations and the ‘selling power’ of the ‘Victoria’s Secret’ mark,” Judge Gilbert Merritt wrote.
The case had prompted an earlier U.S. Supreme Court ruling and federal law. The high court had reversed a 6th Circuit’s decision that affirmed an injunction against “Victoria’s Little Secret.”
The Supreme Court held that “actual harm” rather than merely a “likelihood of harm” must be shown by Victoria’s Secret in order to prevail.”
Congress rejected the court’s view of a “simple likelihood” of an association in the consumer’s mind … [as] insufficient for liability.”
A House Judiciary Committee report found that the court’s standard created an “undue burden” for trademark holders who contest diluting uses, and should be revised.”
What emerged was a law that contained language providing “that the standard for proving a dilution claim is ‘likelihood of dilution” and that both dilution and blurring and dilution by tarnishment are actionable.”
“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,” Merritt wrote.
In her dissent, Judge Karen Nelson Moore said Victoria’s Secret failed to prove “that anyone is likely to think less of Victoria’s Secret as a result of ‘Victor’s Little Secret’ and cannot therefore prevail on its claim of dilution by tarnishment.”
The small shop in a mall in Elizabethtown, Ky., has since changed its name to “Cathy’s Little Secret.”