Supreme Court Rules Against Victoria’s Secret in Trademark Case

The U.S. Supreme Court on March 4 ruled 9-0 against Victoria’s Secret in the apparel cataloger/retailer’s five-year fight against a small adult-toys and videos shop in Elizabethtown, KY, once known as Victor’s Secret. The ruling will now be sent back to the 6th U.S. Circuit Court of Appeals in Cincinnati for mandate, then on to the U.S. District Court for the Western District of Kentucky, the latter of which will officially allow the store to go back to its original name.

After it opened as Victor’s Secret, the store changed its name to Victor’s Little Secret at Victoria’s Secret’s request. Columbus, OH-based Victoria’s Secret wasn’t appeased, though. The store changed its name again, to Cathy’s Little Secret, when Victoria’s Secret filed suit.

In its opinion, the Supreme Court ruled that it could find no proof that the store had harmed Victoria’s Secret’s trademark. Federal trademark law requires evidence that a knock-off name or a name perceived to be that of a knock-off, such as Victor’s Secret, causes harm.

In writing the court’s opinion, Justice John Paul Stevens said that the store’s name “neither confused any consumers or potential consumers, nor was likely to do so.” He added that consumers’ making any kind of mental connection between the Victoria’s Secret trademark and a store name like Victor’s doesn’t show the Victoria’s Secret name was damaged.

“Although we would obviously have preferred for the Court to rule in our favor on all points, we are gratified that it noted the unquestionable strength and value of the Victoria’s Secret brand and trademark,” Victoria’s Secret said in a statement. “In addition, the Court agreed with our primary argument that proof of actual economic harm is not required to establish trademark dilution under federal law.

James Higgins Jr., an attorney with the Louisville, KY, law firm Middleton Reutlinger representing Victor’s Secret, says the store “positioned this case by making a purely legal argument on the contents of this trademark statute. Our goal was for the remand for further proceedings activity to end up with the trial court giving us permission to rename the store back to Victor’s Little Secret.”

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