The name of a retail store featuring adult novelties and gifts --"Victor's Little Secret" --was likely to cause dilution in the form of "tarnishment" of the VICTORIA'S SECRET mark owned by catalogue sellers and the operators of a retail chain of lingerie stores (V Secret), the federal district court in Louisville has decided. V Secret was entitled to a permanent injunction against the store operators.

V Secret's dilution claims previously had been rejected by the U.S. Supreme Court, which held that claimants under the Federal Trademark Dilution Act were required to show "actual dilution" in order to prevail (TRADEMARK LAW GUIDE ¶60,064). Following that decision, Congress enacted the Trademark Dilution Revision Act of 2006 (TDRA), which changed the standard for liability to "likelihood of dilution."

Even though the conduct at issue took place prior to the enactment of the TDRA, the "likelihood of dilution" standard applied to V Secret's claims, the court ruled. V Secret had withdrawn all claims for monetary relief and sought only prospective injunctive relief. Relief by injunction operates in futuro, and the right to it must be determined at the time of hearing. Applying a new statute to a prospective remedy did not raise retroactivity concerns, the court said.

"Tarnishment" is an association arising from the similarity between a mark and a famous mark that harms the reputation of the famous mark. There was evidence that a consumer --an army colonel --had been offended by an advertisement for the adult novelties store and that he believed the store's name to be a bastardization of the VICTORIA'S SECRET mark for the promotion of "unwholesome, tawdry merchandise." V Secret had stated that it scrupulously avoided sexually explicit goods while cultivating a "sexy and playful" image. The line between "sexy and playful" and sexually explicit was one that V Secret sought to maintain in order to preserve its image as a "well-respected retailer of high-quality women's lingerie," according to the court.

V Secret's dilution claim based on "blurring" was rejected by the court. "Blurring" is an association arising from the similarity between a mark and a famous mark that impairs the distinctiveness of the famous mark. There was no dispute that VICTORIA'S SECRET qualified as a famous and distinctive mark

The army colonel's testimony indicated that he had readily associated the store's mark with the VICTORIA'S SECRET mark, but did he not link the store to V Secret. There was no question in his mind that the store's offerings of sex toys and adult videos were not V Secret merchandise; he was not actually misled as to the ownership of the store. Accordingly, V Secret failed to demonstrate the requisite "actual association" between the "Victor's Little Secret" name and the VICTORIA'S SECRET mark for dilution by blurring to be likely.

V Secret Catalogue, Inc., WD Ky., ¶61,248