## Facts

- V Secret Catalogue, Inc. owned the famous VICTORIA’S SECRET trademarks and operated hundreds of retail stores and a large mail-order catalog business.
- Victor and Cathy Moseley operated a small Kentucky store selling lingerie and adult novelties under the name “Victor’s Little Secret” (initially advertised as “Victor’s Secret”).
- After learning of the store’s advertising, V Secret demanded a name change; the Moseleys adopted “Victor’s Little Secret” but continued using “Victor” and “Secret” together.
- V Secret sued under the Federal Trademark Dilution Act of 1995 (FTDA), seeking injunctive relief for dilution of a famous mark.
- The district court granted summary judgment to V Secret and enjoined the Moseleys, concluding dilution was shown without proof of actual harm.
- The Sixth Circuit affirmed, holding that a likelihood of dilution sufficed and finding dilution by blurring and tarnishment.
- V Secret’s dilution evidence included an expert affidavit describing the value and distinctiveness of the VICTORIA’S SECRET mark but offering no proof that the Moseleys’ use reduced the mark’s identifying capacity.

## Issues

1. Under the FTDA, must a plaintiff prove actual dilution of a famous mark’s distinctiveness, or is a likelihood of dilution sufficient for injunctive relief?
2. If actual dilution is required, what kind of proof can satisfy that requirement when the plaintiff does not show lost sales or profits?

## Decision

- The Supreme Court unanimously reversed the Sixth Circuit and remanded.
- The Court held that the FTDA, as then written, required proof of actual dilution, not merely a likelihood of dilution.
- The Court concluded the record lacked evidence that the Moseleys’ use lessened the capacity of the VICTORIA’S SECRET mark to identify and distinguish V Secret’s goods or services.
- The Court rejected the view that mental association alone establishes dilution where the marks are not identical.

## Legal Principles

- Under the FTDA’s “causes dilution” language, a dilution plaintiff must prove actual dilution of the famous mark’s identifying capacity.
- The FTDA does not require proof of actual economic loss (e.g., lost sales or profits), but it does require evidence that distinctiveness has in fact been diminished.
- Mere consumer mental association between the junior and famous marks is insufficient to establish actionable dilution where the marks are not identical.
- Actual dilution may sometimes be proven through circumstantial or surrogate evidence, but evidentiary difficulty does not excuse proof of an essential statutory element.

## Conclusion

The Court held that federal dilution claims under the original FTDA required evidence of actual dilution of a famous mark’s distinctiveness, and it set aside the injunction because V Secret did not show that “Victor’s Little Secret” had actually reduced the ability of VICTORIA’S SECRET to identify and distinguish its goods or services.


Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003)