The attorney going up against Victoria's Secret before the U.S. Supreme Court this fall said yesterday that he is confident the court will rule in his client's favor.
The court will hear the trademark case involving Victoria's Secret and Victor's Little Secret, a store in Elizabethtown, KY, that sells lingerie and adult-themed items when its upcoming term begins in October, the court said Monday without comment.
“I don't think they have a leg to stand on,” said attorney James R. Higgins Jr. of the law firm Middleton Reutlinger, Louisville, KY, who represents Victor Moseley and will be the lead attorney when oral arguments are expected to take place in November. “Unless you can demonstrate actual harm, you shouldn't get an injunction.”
The Sixth U.S. Circuit Court of Appeals in Cincinnati, which ruled against Moseley in July, said a plaintiff “need only show a likelihood of dilution.”
“While no consumer is likely to go to the Moseleys' store expecting to find Victoria's Secret's famed Miracle Bra, consumers who hear the name, 'Victor's Little Secret,' are likely automatically to think of the more famous store and link it to the Moseleys' adult-toy, gag gift and lingerie shop,” the court said.
The store opened Feb. 8, 1998, as Victor's Secret. Victoria's Secret objected, and owners Victor and Cathy Moseley changed the name, initially to Victor's Little Secret.
“They ran pre-opening ads in a Fort Knox (KY) newspaper, and a colonel in the JAG Corps saw the ad and faxed it to Victoria's Secret,” Higgins said. “A cease-and-desist letter was sent out on Feb. 25.”
After several communications with Victoria's Secret's attorneys that included discussions regarding several possible names, Victor Moseley said he decided on Victor's Little Secret. He started using that name around April 1998.
“We were under the impression that was fine, but then they requested samples of all of our merchandise and samples of our bags,” he said. “At that point I thought they went too far, and I refused to go any further. Then they sued me.”
The name change wasn't enough as Victoria's Secret sued the store in U.S. District Court in Louisville, KY, on multiple grounds, including trademark infringement and dilution, Higgins said. He said a federal judge ruled in favor of the Moseleys on the trademark infringement issue, holding that the public could not be confused between Victor's Little Secret and Victoria's Secret. However, the court ruled against the Moseleys on the dilution issue.
The loss in the Louisville court led to another name change, to Cathy's Little Secret, in 2000.
“The court ruled that if a trademark is famous, its owner can object to uses it does not like,” Higgins said.
Moseley's argument is that for there to be any remedy, there must be a showing of actual harm. The court took the position that one only had to show a likelihood of harm, Higgins said.
Higgins told the Supreme Court that the judges who have ruled on the case “clearly were uncomfortable with the Moseleys' business, legitimate though it is.” He told DM News that “pejorative language should not be a substitute” for proof.
“What makes this case appealing to the Supreme Court is that, in other parts of the country, courts interpreting the dilution law have interpreted it the same way Mr. Moseley has,” Higgins said. “Because of the way different courts have interpreted the statute, the Supreme Court must provide a uniform interpretation for the entire county. A name that causes no demonstrable harm should not be the subject of a federal injunction.”
