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 is expected to alter the way federal trademark law is defined.
Ever since Victor’s Little Secret opened for business as Victor’s Secret in 1998 in an Elizabethtown, KY, strip mall, Victoria’s Secret has been after the shop to get it to change its name. Upon the initial complaint, store owner Victor Moseley changed the name to Victor’s Little Secret.
But that wasn’t enough for Victoria’s Secret. The Columbus, OH-based women’s apparel marketer, a division of retail giant Limited Brands, took its case to the Sixth Circuit U.S. Circuit Court of Appeals in Cincinnati. Moseley then changed his store’s name again, to Cathy’s Little Secret, after his wife.
Not finding the name change adequate, Victoria’s Secret filed suit in the U.S. District Court for the Western District of Kentucky, charging federal trademark infringement, unfair competition, violation of the Federal Trademark Dilution Act, common law trademark infringement, and unfair competition.
The Moseleys contended that their store’s name reflected the owner’s own name. According to court papers, the word “secret” was used as a joke, because Moseley didn’t want his former boss from a competing store to know about his store’s opening. But a federal judge and a federal appeals court panel sided with Victoria’s Secret.
Now, before the Supreme Court, the issue is whether the Victoria’s Secret trademark has been damaged by Moseley’s store, which sells adult videos, racy lingerie, and sex toys. The court will explore how narrowly federal trademark law should be construed and will set a national standard for future cases. The court will also consider whether the plaintiff needs to show evidence of specific economic harm as a result of the other business using the similar name.