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March 30th, 2011
Supreme Court Won’t Disturb New Test for Trademark “Dilution” Claims
The U.S. Supreme Court has let stand a ruling with important implications for advertisers of adult and other potentially lewd products. By refusing to hear an appeal in the closely watched V Secret Catalogue Inc. (Victoria’s Secret) v. Mosley case, the high court indirectly endorsed an earlier decision from the Court of Appeals for the Sixth Circuit that made it easier for so-called "tarnishment" claims to succeed when the challenged mark was used in a "sex related" context.
The Sixth Circuit decision established a "presumption" of dilution – an assumption that the use of a famous mark in connection with adult products is "likely to tarnish" that mark. Under the appeals court's approach, the burden of proof would then shift to the user of the challenged mark to overcome this presumption with evidence. The evidence submitted by the user of the challenged mark must rebut "the probability that some consumers will find the new mark both offensive and harmful to the reputation and favorable symbolism of the famous mark." In other words, the user of the challenged mark would need to show "that there is no likelihood or probability of tarnishment." In the Moseley case, the Moseleys did not satisfy their evidentiary burden, and Victoria's Secret was able to stop them from using the name Victor's Secret or Victor's Little Secret for an adult-themed store. Conclusion: this is a good development for holders of famous trademarks seeking to challenge certain competitors or other perceived infringers on dilution or tarnishment grounds.
Read full decision by the Sixth Circuit - "V Secret Cataogue Inc. v. Victor Moseley".
If you have any questions about this alert, please contact Jean Voutsinas at jvoutsinas@fkks.com or (212) 826 5597, Mary Sotis at msotis@fkks.com or (212) 705 4878, or any other member of the Frankfurt Kurnit Trademark Group. For more alerts and general announcements from our firm, follow us on Twitter.
Other Advertising Law Alerts
What the Advertising Industry Can Learn from Kim Kardashian’s Settlement with the SEC
On October 3, 2022, the Securities and Exchange Commission (SEC) announced that it entered into a $1.26 million settlement with Kim Kardashian over her social media promotion of the EMAX token without disclosing payment she received from token issuer, EthereumMax. The matter provides important lessons for advertisers. Read more.
October 10 2022
Get Ready for California’s New “Automatic Renewal” Rules
California recently amended its Automatic Purchase Renewals law. The amended statute - effective July 1st -- require marketers to provide consumers of automatic renewal or continuous service offers with more information and easier ways to terminate. Read more.
June 22 2018
“Made in the U.S.A.” Claims Continue to be Scrutinized
In 2016, California amended Section 17533.7 of the California Business and Professions Code ("Section 17533"), liberalizing the standard for selling products labeled "Made in U.S.A" to California consumers. Read more.
June 4 2018
