- The Washington Times - Wednesday, March 5, 2003

Victoria's Secret, which sold $3.6 billion in lacy and racy undergarments last year, lost a Supreme Court case yesterday that would have forced a sex-toy shop to change its name.
The shop, which advertised "everything for the romantic encounter," was originally called Victor's Secret.
The sound-alike name was not enough to prove that the small store bruised the image of Victoria's Secret, a unanimous Supreme Court ruled. Federal trademark law requires some proof of real harm, and Victoria's Secret did not provide it, the high court said.
There is no question that Victoria's Secret has a well-known and valuable trade name, Justice John Paul Stevens wrote for the court. However, the mere fact that a consumer might think of the big company when encountering a similar or knockoff name is not enough to establish a trademark violation, Judge Stevens wrote.
"Such mental association will not necessarily reduce the capacity of the famous mark to identify the goods of its owner," Judge Stevens wrote.
He noted that an Army colonel who tipped off Victoria's Secret did not change his opinion of the big store, where his wife and daughter had shopped.
The officer may have thought a newspaper advertisement promoting the smaller store was tacky and tawdry, but those impressions affected only that store, not Victoria's Secret, Judge Stevens said.
The ruling follows a five-year fight over a shop run by Victor and Cathy Moseley in a strip mall in Elizabethtown, Ky. The shop opened in time for Valentine's Day in 1998, with merchandise including Lycra dresses, adult videos and mood lighting.
The court sent the case back to a appeals court, and Victoria's Secret could still get a chance to provide more evidence of damage there.
The ruling limits the rights of big companies to protect their name brands, and is a blow to firms such as Intel, Bacardi, John Deere, Benetton and Sotheby's that supported Victoria's Secret in the case.
"It's going to make Victoria's Secret or any other trademark prove that they are actually harmed by someone such as Victor and Cathy Moseley," said their attorney, James R. Higgins Jr. "It's still the goal of our client to have the right to use his given name."
Victoria's Secret first asked the Kentucky store to change its name, but sued when the store altered its sign only to read "Victor's Little Secret." The store is now called Cathy's Little Secret.
Limited Brands, parent company of Victoria's Secret, said the company will continue to try to protect its brand name.
"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," the company said.
The case tested protections that Congress tried to provide to owners of big brands. The Federal Trademark Dilution Act lets well-known brands sue even when it is clear to consumers that a knockoff brand name is not related to the better-known product. The law allows suits when one name "causes dilution" of another, and courts have been split over just what that means or what is required to prove it.
While saying that some proof of trademark harm or dilution is required, the court did not make that proof impossibly hard to provide, said Ethan Horwitz, a New York lawyer who won a similar case for Pepperidge Farms over the distinctive shape of its goldfish cracker.

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