A lawsuit pitting small adult-novelties shop Victor’s Little Secret against cataloger/retailer Victoria’s Secret made its way before the U.S. Supreme Court on Nov. 12, and the outcome will establish a standard for future trademark protection. At press time, the court’s decision was still pending following oral briefings.
Ever since the novelties shop opened as Victor’s Secret in February 1998 in an Elizabethtown, KY, strip mall, Victoria’s Secret has been after it to change its name. After receiving a cease-and-desist complaint from the Columbus, OH-based women’s apparel cataloger/retailer less than a month after the store opened, storeowner Victor Moseley changed the name to Victor’s Little Secret.
But that didn’t appease Victoria’s Secret. A division of retail giant Limited Brands, Victoria’s Secret filed suit in the U.S. District Court for the Western District of Kentucky later that year, charging federal trademark infringement, unfair competition, violation of the Federal Trademark Dilution Act, common law trademark infringement, and unfair competition.
Victor Moseley and his wife, Cathy, contend that their store’s name reflected the owner’s own name. And “Secret” was used as a joke, they say, because Moseley didn’t want his former boss from a competing store to know about his store’s opening at the time. But a federal judge and a federal appeals court panel sided with Victoria’s Secret.
In June 2001, after the district court ruled in Victoria’s Secret’s favor, finding the Victor’s Little Secret name similar enough to cause dilution, the Moseleys appealed the case to the Sixth Circuit U.S. Circuit Court of Appeals in Cincinnati. Nonetheless, in July 2001 they changed the store’s name again, to Cathy’s Little Secret.
The Moseleys argue that the Victoria’s Secret trademark is not distinctive, because hundreds of lingerie companies use “secret” as part of their trademarks. But circuit court disagreed, contending that the Victoria’s Secret trademark is “arbitrary and fanciful” and thus deserving trademark protection.
Damage to the trademark?
Now, before the Supreme Court, the issue boils down to whether the name of the Moseleys’ store, which sells adult videos, racy lingerie, and sex toys, has damaged the Victoria’s Secret name. The court will explore how narrowly federal trademark law should be construed. The justices will also consider whether the plaintiff needs to show evidence of specific economic harm as a result of the other business using a similar name.
When asked by Justice Stephen Breyer what harm the small store could have on Victoria’s Secret’s trademark, company attorney Walter Dellinger said that if one store with the former Victor’s title could be allowed to exist, “there could be thousands. If you imagine hundreds of different uses, the public’s perception is going to be lessened. If Rolls-Royce were on 100 different products, it would not mean anything, and they might as well call their car a Yugo.”
While acknowledging that Victoria’s Secret’s attorneys argued a good case, Moseley feels he’s a victim. “If we lose, everybody loses,” he says. “There’s a lingerie manufacturer called Shirley’s of Hollywood that came along before Frederick’s of Hollywood and never bothered it. In fact, both Frederick’s and our store sell Shirley’s lingerie.”
At press time, Victoria’s Secret spokesperson Anthony Hebron would not comment on the case.