V Secret Catalogue, Inc. v. Moseley

RECOMMENDED FOR FULL-TEXT PUBLICATION
Pursuant to Sixth Circuit Rule 206
File Name: 10a0144p.06

UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT
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Plaintiff-Appellee, -
V SECRET CATALOGUE, INC.,
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No. 08-5793
and
,
>
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Plaintiff, -
VICTORIA’S SECRET STORES, INC.,
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v.

VICTOR MOSELEY, dba Victor’s Little Secret, -
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fka Victor’s Secret; CATHY MOSELEY, dba
Victor’s Little Secret, fka Victor’s Secret, -
Defendants-Appellants. -
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Appeal from the United States District Court
for the Western District of Kentucky at Louisville.
No. 98-00395—Charles R. Simpson III, District Judge.
Argued: January 21, 2010
Decided and Filed: May 19, 2010
Before: MERRITT, MOORE, and GIBBONS, Circuit Judges.

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COUNSEL
ARGUED: John E. Spainhour, GIVHAN & SPAINHOUR, Shepherdsville, Kentucky, for
Appellants. Frank J. Colucci, COLUCCI & UMANS, New York, New York, for Appellees.
ON BRIEF: John E. Spainhour, GIVHAN & SPAINHOUR, Shepherdsville, Kentucky, for
Appellants. Frank J. Colucci, COLUCCI & UMANS, New York, New York, for Appellees.
MERRITT, J., delivered the opinion of the court. GIBBONS, J. (p. 12), delivered
a separate concurring opinion. MOORE, J. (pp. 13-19), delivered a separate dissenting
opinion.

1
No. 08-5793 V Secret Catalogue, Inc., et al. v. Moseley, et al. Page 2

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OPINION
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MERRITT, Circuit Judge. In this trademark “dilution by tarnishment” case, brought
1
under the Trademark Dilution Revision Act of 2006, the question is whether the plaintiff,
an international lingerie company that uses the trade name designation “Victoria’s
Secret” has a valid suit for injunctive relief against the use of the name “Victor’s Little
Secret” or “Victor’s Secret” by the defendants, a small retail store in a mall in
Elizabethtown, Kentucky, that sells assorted merchandise, including “sex toys” and other
sexually oriented products. The District Court issued the injunction. Since then the shop
has been operating under the name of “Cathy’s Little Secret.” The District Court
concluded that even though the two parties do not compete in the same market, the
“Victor’s Little Secret” mark — because it is sex related — disparages and tends to
reduce the positive associations and the “selling power” of the “Victoria’s Secret” mark.
The question is whether the plaintiff’s case meets the definitions and standards for

1
The relevant provisions of the new law change the test for “dilution by tarnishment” from an
“actual” to only a likelihood of “harm” to the “reputation” of the senior mark:
15 U.S.C. § 1125(c) Dilution by blurring; dilution by tarnishment
(1) Injunctive relief
Subject to the principles of equity, the owner of a famous mark that is
distinctive, inherently or through acquired distinctiveness, shall be entitled to an
injunction against another person who, at any time after the owner’s mark has become
famous, commences use of a mark or trade name in commerce that is likely to cause
dilution by blurring or dilution by tarnishment of the famous mark, regardless of the
presence or absence of actual or likely confusion, of competition or of actual economic
injury.
(2) Definition
....
(C) For purposes of paragraph (1), “dilution by tarnishment” is association
arising from the similarity between a mark or trade name and a famous mark that harms
the reputation of the famous mark.
(Emphasis added.)
No. 08-5793 V Secret Catalogue, Inc., et al. v. Moseley, et al. Page 3

“dilution by tarnishment” set out in the new Act which amended the old Act, i.e., the
Federal Trademark Dilution Act of 1995.2

The new Act was expressly intended to overrule the Supreme Court interpretation
of the old Act in this very same case, Moseley v. V Secret Catalog, Inc., 537 U.S. 418
(2003), rev’g 259 F.3d 464 (6th Cir. 2001), aff’g 54 U.S.P.Q.2d 1092 (W.D. Ky. 2000).
The Supreme Court reversed a panel of this Court that had affirmed an injunction against
“Victor’s Little Secret” issued by the District Court. On remand to the District Court
from the Supreme Court after the 2003 reversal, no new evidence was introduced, and
the District Court reconsidered the case based on the same evidence but used the new
language in the new Act which overrules the Supreme Court in this case. We will first
brief the Supreme Court opinion and the reasons Congress overruled the Supreme Court
in this case. We will then outline our understanding of the new standards for measuring
trademark “dilution by tarnishment” and apply them to this case. We conclude that the
new Act creates a kind of rebuttable presumption, or at least a very strong inference, that
a new mark used to sell sex related products is likely to tarnish a famous mark if there
is a clear semantic association between the two. That presumption has not been rebutted
in this case.

I. The Supreme Court Opinion and the New Act

The Supreme Court explained that this case started when an Army Colonel at
Fort Knox saw an ad for “Victor’s Secret” in a weekly publication. It advertised that the
small store in Elizabethtown sold adult videos and novelties and lingerie.3 There was

2
The relevant provisions of the old law provide:
§ 1125(c)(1). The owner of a famous mark shall be entitled, subject to the principles of
equity and upon such terms as the court deems reasonable, to an injunction against
another person’s commercial use in commerce of a mark or trade name, if such use
begins after the mark has become famous and causes dilution of the distinctive quality
of the mark. . . .
3
The Supreme Court explained:
“In the February 12, 1998, edition of a weekly publication distributed to residents of the military
installation at Fort Knox, Kentucky, petitioners advertised the “GRAND OPENING just in time for
Valentine’s Day!” of their store “VICTOR’S SECRET” in nearby Elizabethtown. The ad featured
“Intimate Lingerie for every woman,” “Romantic Lighting”; “Lycra Dresses”; “Pagers”; and “Adult
No. 08-5793 V Secret Catalogue, Inc., et al. v. Moseley, et al. Page 4

no likelihood of confusion between the two businesses or the two marks, but the Army
Colonel was offended because the sexually-oriented business was semantically
associating itself with “Victoria’s Secret.” The Court explained that the concepts of
“dilution by blurring” and “dilution by tarnishment” originated with an article in the
Harvard Law Review, Frank Schechter, “Rational Basis of Trademark Protection,”
40 HARV. L. REV. 813 (1927), and that the history and meaning of the concepts were
further well explained in Restatement (Third) of Unfair Competition, Section 25 (1995).
The Restatement section referred to by the Supreme Court explains this new intellectual
property tort and contains in § 25 a comprehensive statement of “Liability Without Proof
of Confusion: Dilution and Tarnishment.” “Tarnishment,” as distinguished from
“dilution by blurring” was the only claim before the Supreme Court and is the only claim
before us in this new appeal. We quote at length the relevant Restatement explanation
of “tarnishment” in the footnote below.4

Novelties/Gifts.” An army colonel, who saw the ad and was offended by what he perceived to be an
attempt to use a reputable company’s trademark to promote the sale of “unwholesome, tawdry
merchandise,” sent a copy to respondents. Their counsel then wrote to petitioners stating that their choice
of the name “Victor’s Secret” for a store selling lingerie was likely to cause confusion with the well-known
VICTORIA’S SECRET mark and, in addition, was likely to “dilute the distinctiveness” of the mark. They
requested the immediate discontinuance of the use of the name “and any variations thereof.” In response,
petitioners changed the name of their store to “Victor’s Little Secret.” Because that change did not satisfy
respondents, they promptly filed this action in Federal District Court.” 537 U.S. at 426 (internal citations
omitted).
4
“c. Interests protected. The antidilution statutes have been invoked against two distinct threats
to the interests of a trademark owner. First, a mark may be so highly distinctive and so well advertised that
it acts as a powerful selling tool. Such a mark may evoke among prospective purchasers a positive
response that is associated exclusively with the goods or services of the trademark owner. To the extent
that others use the trademark to identify different goods, services or businesses, a dissonance occurs that
blurs this stimulant effect of the mark. The antidilution statutes protect against this dilution of the
distinctiveness and selling power of the mark.
The selling power of a trademark also can be undermined by a use of the mark with goods or
services such as illicit drugs or pornography that “tarnish” the mark’s image through inherently negative
or unsavory associations, or with goods or services that produce a negative response when linked in the
minds of prospective purchasers with the goods or services of the prior user, such as the use on insecticide
of a trademark similar to one previously used by another on food products.
Tarnishment and dilution of distinctiveness, although conceptually distinct, both undermine the
selling power of a mark, the latter by disturbing the conditioned association of the mark with the prior user
and the former by displacing positive with negative associations. Thus, tarnishment and dilution of
distinctiveness reduce the value of the mark to the trademark owner.
....
g. Tarnishment. The antidilution statutes have also been invoked to protect the positive
associations evoked by a mark from subsequent uses that may disparage or tarnish those associations. The
rule stated in Subsection (1)(b) applies to cases in which the tarnishment results from a subsequent use of
No. 08-5793 V Secret Catalogue, Inc., et al. v. Moseley, et al. Page 5

After reviewing a number of secondary sources other than the Harvard Law
Review article and the Restatement, including state statutes on dilution and a Fourth
Circuit case, the Supreme Court held that “actual harm” rather than merely the
“likelihood of tarnishment” is necessary and stated its conclusion as follows:

Noting that consumer surveys and other means of demonstrating actual
dilution are expensive and often unreliable, respondents [Victoria’s
Secret] and their amici argue that evidence of an actual “lessening of the
capacity of a famous mark to identify and distinguish goods or services,”
may be difficult to obtain. It may well be, however, that direct evidence
of dilution such as consumer surveys will not be necessary if actual
dilution can reliably be proved through circumstantial evidence — the
obvious case is one where the junior and senior marks are identical.
Whatever difficulties of proof may be entailed, they are not an acceptable
reason for dispensing with proof of an essential element of a statutory
violation. The evidence in the present record is not sufficient to support
the summary judgment on the dilution count. The judgment is therefore
reversed, and the case is remanded for further proceedings consistent
with this opinion.

537 U.S. at 434 (emphasis added).

Thus, the Court held that “actual harm” rather than merely a “likelihood” of harm
must be shown by Victoria’s Secret in order to prevail and that this means that Victoria’s
Secret carries the burden of proving an actual “lessening of the capacity of the Victoria’s
Secret mark to identify and distinguish goods or services sold in Victoria’s Secret stores

the mark or a substantially similar mark in a manner that associates the mark with different goods, services,
or businesses. Use of another’s mark by the actor, not as a trademark or trade name, but in other ways that
may disparage or tarnish the prior user’s goods, services, business, or mark is governed by the rule stated
in Subsection (2).
Any designation that is distinctive under the criteria established in § 13 is eligible for protection
against disparaging or tarnishing use by others. Whenever the subsequent use brings to mind the goods,
services, business, or mark of the prior user, there is potential for interference with the positive images
associated with the mark. To prove a case of tarnishment, the prior user must demonstrate that the
subsequent use is likely to come to the attention of the prior user’s prospective purchasers and that the use
is likely to undermine or damage the positive associations evoked by the mark.

Illustration:
3. A, a bank, uses the designation “Cookie Jar” to identify its automatic teller
machine. B opens a topless bar across the street from A under the trade name “Cookie
Jar.” Although prospective customers of A are unlikely to believe that A operates or
sponsors the bar, B is subject to liability to A for tarnishment under an applicable
antidilution statute if the customers are likely to associate A’s mark or A’s business with
the images evoked by B’s use.”
No. 08-5793 V Secret Catalogue, Inc., et al. v. Moseley, et al. Page 6

or advertised in its catalogs.” Id. In the new law Congress rejected the Court’s view that
a simple “likelihood” of an association in the consumer’s mind of the Victoria’s Secret
mark with the sexually-oriented videos and toys of “Victor’s Secret” is insufficient for
liability.

The House Judiciary Committee Report states the purpose of the new 2006
legislation as follows:

The Moseley standard creates an undue burden for trademark holders
who contest diluting uses and should be revised.
....
The new language in the legislation [provides] . . . specifically that the
standard for proving a dilution claim is “likelihood of dilution” and that
both dilution by blurring and dilution by tarnishment are actionable.

(Emphasis added.) U.S. Code Cong. & Adm. News, 109th Cong. 2d Sess. 2006, Vol.
4, pp. 1091, 1092, 1097. The relevant language of the new Act designed to carry out this
purpose is recited and underlined in footnote 1, supra. The drafters of the Committee
Report also called special attention to the “burden” of proof or persuasion placed on
“trademark holders” by the Supreme Court’s opinion in Moseley, suggesting a possible
modification in the burden of proof. The question for us then is whether “Victor’s Little
Secret” with its association with lewd sexual toys creates a “likelihood of dilution by
tarnishment” of Victoria’s Secret mark.

II. Application of Statutory Standard

The specific question in this case is whether, without consumer surveys or polls
or other evidence, a semantic “association” is equivalent to a liability-creating mental
“association” of a junior mark like “Victor’s Little Secret” with a famous mark like
“Victoria’s Secret” that constitutes dilution by tarnishment when the junior mark is used
to sell sexual toys, videos and similar soft-core pornographic products. There appears
to be a clearly emerging consensus in the case law, aided by the language of § 25 of the
Restatement of Trademarks 3d, quoted in footnote 4, supra, that the creation of an
“association” between a famous mark and lewd or bawdy sexual activity disparages and
No. 08-5793 V Secret Catalogue, Inc., et al. v. Moseley, et al. Page 7

defiles the famous mark and reduces the commercial value of its selling power. This
consensus stems from an economic prediction about consumer taste and how the
predicted reaction of conventional consumers in our culture will affect the economic
value of the famous mark.

There have been at least eight federal cases in six jurisdictions that conclude that
a famous mark is tarnished when its mark is semantically associated with a new mark
that is used to sell sex-related products. We find no exceptions in the case law that allow
such a new mark associated with sex to stand. See Pfizer Inc. v. Sachs, 652 F. Supp. 2d
512, 525 (S.D.N.Y. 2009) (defendants’ display at an adult entertainment exhibition of
two models riding a VIAGRA-branded missile and distributing condoms would likely
harm the reputation of Pfizer’s trademark); Williams-Sonoma, Inc. v. Friendfinder, Inc.,
No. C 06-6572 JSW (MEJ) , 2007 WL 4973848, at *7 (N.D. Cal., Dec. 6, 2007)
(defendants’ use of POTTERY BARN mark on their sexually-oriented websites likely
to tarnish “by associating those marks for children and teenager furnishings”); Kraft
Foods Holdings, Inc. v. Helm, 205 F. Supp. 2d 942, 949-50 (N.D. Ill. 2002)
(pornographic website’s use of “VelVeeda” tarnishes VELVEETA trademark);
Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F. Supp. 2d 1339,
1355 (S.D. Fla. 2001) (defendants’ internet trade names likely to tarnish famous mark
when websites “will be used for entertainment of a lascivious nature suitable only for
adults”); Mattell, Inc. v. Internet Dimensions Inc., 55 U.S.P.Q.2d 1620, 1627 (S.D.N.Y.
2000) (linking BARBIE with pornography will adversely color the public’s impressions
of BARBIE); Polo Ralph Lauren L.P. v. Schuman, 46 U.S.P.Q.2d 1046, 1048 (S.D Tex.
1998) (defendants’ use of “The Polo Club” or “Polo Executive Retreat” as an adult
entertainment club tarnished POLO trademark); Pillsbury Co. v. Milky Way Prods., Inc.,
215 U.S.P.Q. 124, 135 (N.D. Ga. 1981) (defendant’s sexually-oriented variation of the
PILLSBURY DOUGHBOY tarnished plaintiff’s mark); Dallas Cowboys Cheerleaders,
Inc. v. Pussycat Cinema, Ltd., 467 F. Supp. 366, 377 (S.D.N.Y. 1979) (pornographic
depiction of a Dallas Cowboys Cheerleader-style cheerleader in an adult film tarnished
the professional mark of the Dallas Cowboys).
No. 08-5793 V Secret Catalogue, Inc., et al. v. Moseley, et al. Page 8

The phrase “likely to cause dilution” used in the new statute (see footnote 1)
significantly changes the meaning of the law from “causes actual harm” under the pre-
existing law. The word “likely” or “likelihood” means “probably,” WEBSTER’S THIRD
NEW INTERNATIONAL DICTIONARY 1310 (1963); BLACK’S LAW DICTIONARY 1076
(1968). It is important to note also that the Committee Report quoted above seeks to
reduce the “burden” of evidentiary production on the trademark holder. The burden-of-
proof problem, the developing case law, and the Restatement (Third) of Trademarks in
§ 25 (particularly subsection g) should now be interpreted, we think, to create a kind of
rebuttable presumption, or at least a very strong inference, that a new mark used to sell
sex-related products is likely to tarnish a famous mark if there is a clear semantic
association between the two. This res ipsa loquitur-like effect is not conclusive but
places on the owner of the new mark the burden of coming forward with evidence that
there is no likelihood or probability of tarnishment. The evidence could be in the form
of expert testimony or surveys or polls or customer testimony.

In the present case, the Moseleys have had two opportunities in the District Court
to offer evidence that there is no real probability of tarnishment and have not done so.
They did not offer at oral argument any suggestion that they could make such a showing
or wanted the case remanded for that purpose. The fact that Congress was dissatisfied
with the Moseley result and the Moseley standard of liability, as well as apparently the
Moseley burden of proof, supports the view of Victoria’s Secret that the present record
— in the eyes of the legislative branch — shows a likelihood of tarnishment. Without
evidence to the contrary or a persuasive defensive theory that rebuts the presumption,
the defendants have given us no basis to reverse the judgment of the District Court. We
do not find sufficient the defendants’ arguments that they should have the right to use
Victor Moseley’s first name and that the effect of the association is de minimis. The
Moseleys do not have a right to use the word “secret” in their mark. They use it only to
make the association with the Victoria’s Secret mark. We agree that the tarnishing effect
of the Moseley’s mark on the senior mark is somewhat speculative, but we have no
evidence to overcome the strong inference created by the case law, the Restatement, and
Congressional dissatisfaction with the burden of proof used in this case in the Supreme
No. 08-5793 V Secret Catalogue, Inc., et al. v. Moseley, et al. Page 9

Court. The new law seems designed to protect trademarks from any unfavorable sexual
associations. Thus, any new mark with a lewd or offensive-to-some sexual association
raises a strong inference of tarnishment. The inference must be overcome by evidence
that rebuts the probability that some consumers will find the new mark both offensive
and harmful to the reputation and the favorable symbolism of the famous mark.

Our dissenting colleague, in relying on the Supreme Court treatment of the proof
in this case — for example, the long quotation from the Supreme Court concerning the
legal effect of the evidence — fails to concede what seems obvious: Congress overruled
the Supreme Court’s view of the burden of proof. As quoted above, it said, “the
Moseley standard creates an undue burden for trademark holders who contest diluting
uses. . . . .” It seems clear that the new Act demonstrates that Congress intended that a
court should reach a different result in this case if the facts remain the same. We do not
necessarily disagree with our dissenting colleague that the policy followed by the
Supreme Court in such cases may be better. We simply believe that the will of Congress
is to the contrary with regard to the proof in this case and with regard to the method of
allocating the burden of proof.

III. Other Issues

The defendants also contend that the new Act should not be applied to them in
this case because (1) the Law of the Case Doctrine means that the Supreme Court
opinion in their favor remains in effect, (2) the new Act is not retroactive, and (3) the
plaintiff’s claim does not fit within the language of the Act found in 15 U.S.C.
§ 1125(c)(5) which reads as follows:

Additional remedies

In an action brought under this subsection, the owner of the
famous mark shall be entitled to injunctive relief as set forth in section
1116 of this title. [Describing requirements in addition to normal
injunctions under § 1125(c)(1) to obtain injunctions in various kinds of
trademark disputes.] The owner of the famous mark shall also be entitled
to the remedies set forth in sections 1117(a) and 1118 of this title,
[Describing remedies for attorneys fees, treble damages, etc., not
No. 08-5793 V Secret Catalogue, Inc., et al. v. Moseley, et al. Page 10

applicable here.] subject to the discretion of the court and the principles
of equity if --
(A) The mark or trade name that is likely to cause dilution by
blurring or dilution by tarnishment was first used in commerce by the
person against whom the injunction is sought after October 6, 2006, and
(B) in a claim arising under this subsection —
(i) by reason of dilution by blurring, the person against whom the
injunction is sought willfully intended to trade on the recognition of the
famous mark; or
(ii) by reason of dilution by tarnishment, the person against
whom the injunction is sought willfully intended to harm the reputation
of the famous mark.

Defendants claim somehow that the new Act is only applicable to claims brought under
this subsection and that the plaintiff’s claims were brought for use of a trade name used
before, not after October 6, 2006, and hence in violation of subsection (5)(A).

1. Law of the Case Doctrine. — The Law of the Case Doctrine has no
application here to the prospective relief sought because while the case was pending a
“controlling authority” (Congress) changed the law, see United States v. Moored, 38
F.3d 1419, 1421 (6th Cir. 1994) (“a subsequent contrary view of the law by the
controlling authority” in a pending case justifies disregarding the Law of the Case
Doctrine).

2. Retroactivity. — New statutes are not necessarily “retroactive” and may be
applied to pending cases where prospective relief is sought for ongoing conduct: “When
the intervening statute authorizes or affects the propriety of prospective relief,
application of the new provision is not retroactive.” Landgraft v. U.S.I. Film Prods., 511
U.S. 244, 273-74 (1994).

3. Applicability of 15 U.S.C. § 1125(c)(5). — The defendants’ reliance on this
subsection of the new act is misplaced. This subsection of the new Act refers to
“Additional remedies,” not set out in the injunctive relief section of § 1125(c)(1), the
first section of the new Act quoted in footnote 1 above which provides for an injunction
“at anytime after the owner’s mark has become famous” and the junior mark “that is
No. 08-5793 V Secret Catalogue, Inc., et al. v. Moseley, et al. Page 11

likely to cause dilution” is used. The new Act intervened and required a reconsideration
of the case on the merits. We have now fully considered the case on the merits, as well
as the defendants’ other defenses and conclude that the District Court did not err in its
decision in favor of the plaintiff, Victoria’s Secret.

Accordingly, the judgment of the District Court is AFFIRMED.
No. 08-5793 V Secret Catalogue, Inc., et al. v. Moseley, et al. Page 12

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CONCURRENCE
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JULIA SMITH GIBBONS, Circuit Judge, concurring. I fully concur in the
majority opinion with the exception of one small quibble. I would not use the term
“rebuttable presumption” to describe the inference that a new mark used to sell sex-
related products is likely to tarnish a famous mark if there is a clear semantic association
between the two. Practically speaking, what the inference is called makes little
difference. I agree with the majority opinion that the inference is a strong one and that,
to counter it, some evidence that there is no likelihood or probability of tarnishment is
required. But because we are endeavoring to interpret a new law and because the
legislative history is not explicit on the point of modification of the burden of proof, I
think it best to end our analysis by characterizing the inference as an inference.
No. 08-5793 V Secret Catalogue, Inc., et al. v. Moseley, et al. Page 13

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DISSENT
_________________

KAREN NELSON MOORE, Circuit Judge, dissenting. Because I believe that
Victoria’s Secret has failed to produce sufficient evidence to show that the Moseleys’
use of the name “Victor’s Little Secret” is likely to tarnish the VICTORIA’S SECRET
mark, I would reverse the judgment of the district court and must respectfully dissent.

Under the Trademark Dilution Revision Act of 2006 (“TDRA”), Victoria’s
Secret is entitled to injunctive relief if the Moseleys’ use of “Victor’s Little Secret” as
the name of their adult-oriented novelty store1 “is likely to cause dilution . . . by
tarnishment of the” VICTORIA’S SECRET mark. 15 U.S.C. § 1125(c)(1). “[D]ilution
by tarnishment” is defined as an “association arising from the similarity between a mark
or trade name and a famous mark that harms the reputation of the famous mark.” Id.
§ 1125(c)(2)(C). Thus, under the terms of the statute, to determine whether the
VICTORIA’S SECRET mark is likely to be tarnished by the Moseleys’ use, this court
must inquire as to both the “association” between the two marks and the “harm” that the
association causes to the senior mark.

Because I agree that there is a clear association between the two marks, the
determinative inquiry in this dilution-by-tarnishment case is whether that association is
likely to harm Victoria’s Secret’s reputation. See id. § 1125(c)(2)(C) (“that harms the
reputation of the famous mark”). Contrary to the majority’s conclusion, however, given
the record before the panel, I would hold that Victoria’s Secret has failed to meet its
burden to show that the Moseleys’ use of “Victor’s Little Secret” is likely to dilute
Victoria’s Secret’s mark.2

1
Victor’s Little Secret “sell[s] a wide variety of items, including adult videos, adult novelties, and
lingerie.” Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 424 (2003) (internal quotation marks
omitted); see also id. at 424 n.4 (listing numerous other items sold). “Victor Moseley stated in an affidavit
that women’s lingerie represented only about five percent of their sales.” Id. at 424.
2
I respectfully disagree with the majority’s conclusion that in dilution-by-tarnishment cases
involving new marks “with lewd or offensive-to-some sexual association[s]” the TDRA establishes a
presumption or inference of tarnishment that the Moseleys must rebut. Maj. Op. at 9, 10. To be sure, the
No. 08-5793 V Secret Catalogue, Inc., et al. v. Moseley, et al. Page 14

Victoria’s Secret’s evidence of tarnishment includes nothing more than the
following: (1) an affidavit from Army Colonel John E. Baker stating that he “was . . .
offended by [the] defendants’ use of [Victoria’s Secret’s] trademark to promote . . .
unwholesome, tawdry merchandise,” such as “‘adult’ novelties and gifts,” and that since
his “wife . . . and . . . daughter . . . shop at Victoria’s Secret, [he] was further dismayed
by [the] defendants’ effort to associate itself with, trade off on the image of, and in fact
denigrate a store frequented by members of [his] family,” Record on Appeal (“ROA”)
at 267 (Baker Aff.); and (2) a statement from one of Victoria’s Secret’s corporate
officers that Victoria’s Secret strives to “maintain[] an image that is sexy and playful”
and one that “avoid[s] sexually explicit or graphic imagery.” Id. at 90 (Kriss Aff.).

Reviewing Baker’s affidavit, I believe that it is plain that Baker made a “mental
association” between “Victor’s Little Secret” and “Victoria’s Secret.” Moseley v.
V Secret Catalogue, Inc., 537 U.S. 418, 434 (2003); see also ROA at 266 (Baker Aff.).
It is also clear that Baker held a negative impression of “Victor’s Little Secret.” See
Moseley, 537 U.S. at 434; see also ROA at 267 (Baker Aff.). But despite the clear
negative association of this one individual when confronted with “Victor’s Little Secret,”
Victoria’s Secret has presented no evidence that Baker’s, or anyone else’s, distaste or
dislike of “Victor’s Little Secret” is likely to taint their positive opinion or perception
of Victoria’s Secret. Yet evidence that the junior mark is likely to undermine or alter the
positive associations of the senior mark—i.e., evidence that the junior mark is likely to
harm the reputation of the senior mark—is precisely the showing required under the
plain language of 15 U.S.C. § 1125(c)(2)(C) to prove dilution by tarnishment. As the
Second Circuit recently noted in Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588
F.3d 97 (2d Cir. 2009):

House Judiciary Committee Report highlights Congress’s concern with the pre-TDRA actual-dilution
standard, but I do not read its concern that the previous standard created “an undue burden” to mean that
Congress envisioned a modification of the party that bears the burden of proof as opposed to simply a
lightening of the evidentiary showing. See H.R. Rep. No. 109-23, at 5 (2005) (“Witnesses at the[]
[legislative] hearings focused on the standard of harm threshold articulated in Mosely [sic]. . . . The Mosely
[sic] standard creates an undue burden for trademark holders who contest diluting uses and should be
revised.”). The burden to show tarnishment remains with Victoria’s Secret.
No. 08-5793 V Secret Catalogue, Inc., et al. v. Moseley, et al. Page 15

That a consumer may associate a negative-sounding junior mark with a
famous mark says little of whether the consumer views the junior mark
as harming the reputation of the famous mark. The more relevant
question, for purposes of tarnishment, would have been how a
hypothetical coffee [with a negative-sounding name] would affect the
positive impressions about the coffee sold by Starbucks.

Starbucks Corp., 588 F.3d at 110; see also J. Thomas McCarthy, 4 McCarthy on
Trademarks and Unfair Competition § 24:89 (4th ed.) [hereinafter McCarthy on
Trademarks] (discussing tarnishment claims as being premised on the notion that
“positive associations” of the senior mark will be displaced or degraded by the negative
associations of the junior mark); Restatement (Third) of Unfair Competition § 25 cmt.
g (1995) (“To prove a case of tarnishment, the prior user must demonstrate that the
subsequent use is likely to . . . undermine or damage the positive associations evoked by
the mark.”). In fact, when reviewing the exact same evidentiary record, the Supreme
Court explicitly noted that Victoria’s Secret’s offer of proof included no evidence that
“Victor’s Little Secret” affected Baker’s positive impressions of Victoria’s Secret:

The record in this case establishes that an army officer . . . did make the
mental association with “Victoria’s Secret,” but it also shows that he did
not therefore form any different impression of the store that his wife and
daughter had patronized. There is a complete absence of evidence of
any lessening of the capacity of the VICTORIA’S SECRET mark to
identify and distinguish goods or services sold in Victoria’s Secret stores
or advertised in its catalogs. The officer was offended by the ad, but it
did not change his conception of Victoria’s Secret. His offense was
directed entirely at [the Moseleys], not at [Victoria’s Secret]. Moreover,
the expert retained by respondents had nothing to say about the impact
of [the Moseleys’] name on the strength of [Victoria’s Secret’s] mark.

Moseley, 537 U.S. at 434 (emphases added).3

3
The majority mischaracterizes my citation to the Supreme Court’s decision as evidencing a
refusal to follow the “will of Congress” and a desire to follow the pre-TDRA “policy [of the] . . . Supreme
Court.” Maj. Op. at 9. My citation to the Supreme Court’s decision, however, does no such thing. First,
as stated previously, I believe that the majority’s conclusion that Congress intended to change which party
has the burden of proof—i.e., the framework governing which party must put forth evidence in support
of its position—as opposed to the standard of harm—i.e., actual harm versus a likelihood of harm—is not
supported by the statute or the legislative history. In fact, the only evidence that the majority cites in
support of its belief that Congress intended to place the burden of proof on the defendant is the House
Committee Report, but even that Report undercuts the majority’s argument. The full paragraph from
which the majority draws its quotation states:
Witnesses at the[] [legislative] hearings focused on the standard of harm threshold
No. 08-5793 V Secret Catalogue, Inc., et al. v. Moseley, et al. Page 16

In short, Victoria’s Secret has presented no probative evidence that anyone is
likely to think less of Victoria’s Secret as a result of “Victor’s Little Secret” and cannot
therefore prevail on its claim of dilution by tarnishment. See Hormel Foods Corp. v. Jim
Henson Prods., Inc., 73 F.3d 497, 507 (2d Cir. 1996) (“Absent any showing that
Henson’s use [of a puppet named Spa’am] will create negative associations with the
SPAM mark, there [is] little likelihood of dilution.”). Instead of developing a record on
remand that contains at least some evidence that Victoria’s Secret’s reputation is likely
to suffer because of the negative response that “Victor’s Little Secret” engendered, the
record before the panel indicates only that a single individual thinks poorly of “Victor’s
Little Secret.” See Moseley, 537 U.S. at 434. On this record, it is simply no more
probable that Victoria’s Secret will suffer reputational harm as a result of the Moseleys’
use of “Victor’s Little Secret” than it is probable that those who are offended by
“Victor’s Little Secret” will limit their negative impressions to the Moseleys and refrain
from projecting those negative associations upon Victoria’s Secret. Baker’s affidavit
does nothing to contradict this conclusion, and given the absence of any indication that
his or his family’s opinion of Victoria’s Secret changed following the Moseleys’ use of
“Victor’s Little Secret,” his affidavit may, in fact, provide evidence that individuals are
likely to confine their distaste to the Moseleys. See id. (“The officer was offended by

articulated in Mosely [sic]. For example, a representative of the International Trademark
Association observed that “[b]y the time measurable, provable damage to the mark has
occurred much time has passed, the damage has been done, and the remedy, which is
injunctive relief, is far less effective.” The Committee endorses this position. The
Mosely [sic] standard creates an undue burden for trademark holders who contest
diluting uses and should be revised.”
H.R. Rep. No. 109-23, at 5 (internal footnote omitted and emphasis added). It was the “standard of harm
threshold,” i.e., the showing of actual harm that the Supreme Court employed, that was Congress’s
concern, not the party bearing the burden of proof. This conclusion is supported by the hearings to which
the Committee Report refers. During those hearings, the focus of both the House Representatives and the
witnesses was whether Congress should “maintain an actual dilution standard, as the Supreme Court held
in the Victoria’s Secret case,” or adopt a “likelihood of dilution standard.” Trademark Dilution Revision
Act of 2005: Hearing Before the Subcomm. on Courts, the Internet, and Intellectual Property of the H.
Comm. on the Judiciary, 109th Cong. 4 (2005) (statement of Rep. Berman); see generally id. at 1–54.
I certainly recognize that Congress changed the law concerning dilution in response to the
Supreme Court’s decision in Moseley, but the Supreme Court in Moseley said nothing about changing the
party bearing the burden of proof and neither does the amended statute. Instead, the statute explicitly states
that “dilution by tarnishment” is an “association arising from the similarity between a mark or trade name
and a famous mark that harms the reputation of the famous mark.” 15 U.S.C. § 1125(c)(2)(C) (emphasis
added). In concluding that Victoria’s Secret has failed to prove a likelihood of tarnishment because it has
failed to present evidence that Victor’s Little Secret is likely to harm the reputation of its mark, I am doing
nothing more than applying the plain language of the statute that Congress enacted after the Supreme
Court’s decision. This approach certainly reflects the “will of Congress.” Maj. Op. at 9.
No. 08-5793 V Secret Catalogue, Inc., et al. v. Moseley, et al. Page 17

the ad, but it did not change his conception of Victoria’s Secret. His offense was
directed entirely at [the Moseleys], not at [Victoria’s Secret].”).

Certainly, it is possible that the Moseleys’ use of “Victor’s Little Secret” to sell
adult-oriented material and other novelties could reflect poorly on the VICTORIA’S
SECRET mark and could cause Victoria’s Secret to suffer damage to its “sexy and
playful” reputation, but the evidentiary standard set forth in the statute is one of
likelihood not mere possibility. Likelihood is based on probable consequence and
amounts to more than simple speculation as to what might possibly happen. See
McCarthy on Trademarks § 24:115 n.2 (indicating that “‘likelihood’ in the dilution part
of the Lanham Act has the same meaning as it does in the traditional infringement
sections of the Lanham Act: as synonymous with ‘probability’”); see also Parks v.
LaFace Records, 329 F.3d 437, 446 (6th Cir. 2003) (“A ‘likelihood’ means a
‘probability’ rather than a ‘possibility’ of confusion.”). Yet, as the majority notes, on
the instant record, the “tarnishing effect of the Moseley’s mark on the senior mark” is
nothing more than “speculative.” Maj. Op. at 8-9.

Despite the absence of evidence, the majority is willing to assume that Victoria’s
Secret has met its burden to prove the essential element of “harm to reputation” based
on the fact that numerous cases from other jurisdictions conclude, without much inquiry,
“that a famous mark is tarnished when its mark is semantically associated with a new
mark that is used to sell sex-related products.” Id. at 7. I do not agree. Although it is
true that courts have concluded that a finding of tarnishment is likely when a mark’s
“likeness is placed in the context of sexual activity, obscenity, or illegal activity,”
Hormel Foods Corp., 73 F.3d at 507, a court cannot ignore the showing of reputational
harm that the statute requires.4

4
Nor can the court ignore the character of the senior mark when applying the majority’s “rule.”
Victoria’s Secret sells women’s lingerie, and, as Victoria’s Secret readily admits, its own mark is already
associated with sex, albeit not with sex novelties. See ROA at 90 (Kriss Aff.) (noting that Victoria’s Secret
attempts to maintain a “sexy and playful” image); see also, e.g., id. at 156–57 (depicting Victoria’s Secret
advertisements for “sexy little things” lingerie, which urge customers to “[b]e bad for goodness sake[] [i]n
peek-a-boo’s, bras and sexy Santa accessories,” to “[g]ive flirty panties” as gifts, and participate in the
store’s “panty fantasy,” which it describes as “Very racy. Very lacy”); id. at 209 (reproducing an article
in Redbook magazine entitled “46 Things to Do to a Naked Man,” which highlights Victoria’s Secret’s
role in the sexual activities of one of the contributors).
No. 08-5793 V Secret Catalogue, Inc., et al. v. Moseley, et al. Page 18

Even assuming that “Victor’s Little Secret” is plainly unwholesome when
compared to Victoria’s Secret and that this case is completely analogous to those cases
on which the majority relies, I still maintain that it is improper simply to assume
likelihood of harm to the reputation of a senior mark when dealing with a junior mark
of sexual character. As recounted above, there is no evidence connecting Victor’s Little
Secret’s “unwholesome” or “tawdry” sexual character to the senior mark’s reputation,
and there is nothing in the language of the TDRA that would allow the court to forgive
a party’s obligation present proof as to an element of the tarnishment cause of
action—i.e., the likelihood of harm to reputation.5 See McCarthy on Trademarks
§ 24:115 (“Even after the 2006 revision when only a likelihood of dilution is required,
. . . judges should demand persuasive evidence that dilution is likely to occur. Even the
probability of dilution should be proven by evidence, not just by theoretical assumptions
about what possibly could occur or might happen.”).

With its conclusion that there is sufficient evidence of harm to the reputation of
the VICTORIA’S SECRET mark based solely on the sexual nature of the junior mark,

In essence, the VICTORIA’S SECRET mark is not entirely separate from the sexual context
within which the junior mark, “Victor’s Little Secret,” operates. This fact makes the instant case unlike
many of the cases that the majority cites. Cf. Williams-Sonoma, Inc. v. Friendfinder, Inc., No. C 06-6572
JSW (MEJ), 2007 WL 4973848, at *7 (N.D. Cal., Dec. 6, 2007) (likelihood of tarnishment where “marks
for children and teenager furnishings” were associated “with pornographic websites”); Kraft Foods
Holdings, Inc. v. Helm, 205 F. Supp. 2d 942, 949 (N.D. Ill. 2002) (likelihood of dilution where the mark
for cheese products was associated with websites that “depict[] graphic sexuality and nudity, as well as
illustrations of drug use and drug paraphernalia”); Mattell Inc. v. Internet Dimensions Inc., 55 U.S.P.Q.2d
(BNA) 1620, 1627 (S.D.N.Y. 2000) (likelihood of tarnishment when the BARBIE mark was linked to
adult-entertainment websites); Polo Ralph Lauren L.P. v. Schuman, 46 U.S.P.Q.2d (BNA) 1046, 1048
(S.D. Tex. 1998) (dilution likely where Polo Ralph Lauren’s mark was associated with “an adult
entertainment business”); Toys “R” Us Inc. v. Akkaoui, 40 U.S.P.Q.2d (BNA) 1836, 1838 (N.D. Cal. 1996)
(likelihood of tarnishment where children’s toy store was associated with “a line of sexual products”);
Hasbro, Inc. v. Internet Entm’t Group Ltd., 40 U.S.P.Q.2d (BNA) 1479, 1480 (W.D. Wash. 1996) (dilution
likely where the children’s game Candyland was linked to “a sexually explicit Internet site”); Am. Express
Co. v. Vibra Approved Labs. Corp., 10 U.S.P.Q.2d (BNA) 2006, 2014 (S.D.N.Y. 1989) (tarnishment likely
where an American Express charge card was linked to condoms and a sex-toy store); Pillsbury Co. v. Milky
Way Prods., Inc., 215 U.S.P.Q. (BNA) 124, 126, 135 (N.D. Ga. 1981) (likelihood of dilution where the
Pillsbury dough figures were portrayed as “engaging in sexual intercourse and fellatio”); Dallas Cowboys
Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 467 F. Supp. 366, 377 (S.D.N.Y. 1979), affirmed by 604 F.2d
200, 205 (2d Cir. 1979) (tarnishment likely where NFL cheerleaders were portrayed in a pornographic
film).
5
The potential problem with simply assuming tarnishment when the junior mark places the senior
mark in a sexual context becomes apparent if one considers a different case. What if the holder of a sex-
related senior mark levied a claim of dilution by tarnishment against the holder of a junior mark that was
similarly associated with sex? Would the court be willing to assume without further proof that despite
their similar sexual origins the junior mark necessarily tarnishes the senior mark? Under the majority’s
reasoning, such an assumption would be appropriate. This cannot be the law.
No. 08-5793 V Secret Catalogue, Inc., et al. v. Moseley, et al. Page 19

the majority sanctions an almost non-existent evidentiary standard and, in the process,
essentially eliminates the requirement that a plaintiff provide some semblance of proof
of likelihood of reputational harm in order to prevail on a tarnishment claim, despite the
plain language of 15 U.S.C. § 1125(c)(2). Because I believe that Victoria’s Secret has
not met its burden to show that “Victor’s Little Secret” is likely to dilute the famous
mark by way of tarnishment, I respectfully dissent.