Ninth Circuit Finds Dilution by Blurring Despite Mark Also Having English Meaning

In Visa International Service Association v. JSL Corp., 95 USPQ2d 1571 (9th Cir. 2010), JSL is owned by Joseph Orr, runs “eVISA,” a multilingual education and information business that exists and operates exclusively on the Internet,” at http://www.evisa.com.  Orr claimed that the name eVisa originates from his English language tutoring service called “Eikaiwa Visa” that he operated in Japan he ran while living in Japan. “Eikaiwa” is Japanese for English conversation.  As such, the “e” in eVisa is short for Eikaiwa. Continue reading

Sixth Circuit Finds Dilution in Long Running Case

In V Secret Catalogue, Inc. v. Moseley, 605 F.3d 382 (6th 2010), Victoria’s Secret Catalogue, Inc., has licensed Victoria’s Secret Catalogue, LLC and Victoria’s Secret Stores, Inc. to use the “Victoria’s Secret” mark. Victoria’s Secret sells a complete line of women’s lingerie in nation wide store chain, and distributes 400 million copies of the Victoria’s Secret catalog each year, including 39,000 in Elizabethtown, Kentucky.  Victor and Cathy Moseley opened “Victor’s Secret” in Elizabethtown to sell a wide variety of items, including women’s lingerie, adult videos, sex toys and “adult novelties” in February, 1998. The Moseleys assert that they were not aware of Victoria’s Secret’s catalog or stores until they received a cease and desist letter from counsel for Victoria’s Secret on February 25, 1998 after an army officer who saw the advertisement of “Victor’s Secret” made the mental association with “Victoria’s Secret” and informed the plaintiff of “Victor’s secret” store.  The Moseleys subsequently changed the name of their store to “Victor’s Little Secret” then “Cathy’s secret.”

Suit was initially brought under the former Federal Trademark Dilution Act (“FTDA” or “the Act”), which allowed injunctive relief for the owner of a famous mark against another person’s use of a mark if it causes dilution of the distinctive quality of the mark and did not clarified whether “actual dilution” was required or “likelihood of dilution” was enough for injunction. 15 USC § 1125 (c).  But the definition clause of “dilution” under former FTDA discerned “actual dilution” and “likelihood of dilution.” 15 USC § 1127.

The district court found that the Victor’s Little Secret mark both blurred and tarnished the Victoria’s Secret mark under FTDA 15 USC § 1125 (c). V Secret Catalogue v. Moseley, 54 U.S.P.Q.2D (BNA) 1092 (W.D. Ky.2000).

On appeal, the Court of Appeals for the Sixth Circuit refused to interpret the act as requiring “actual dilution” as doing so would defeat the intention of statute.  Thus, the Sixth Circuit held that the injunction should be allowed even absence of “actual dilution.”

However, the Supreme Court of United States held that since the act provides that the infringing use must cause “dilution of the distinctive quality” of the famous mark, 15 U.S.C. § 1125(c)(1) unambiguously required a showing of actual dilution, rather than a likelihood of dilution. Moseley v. V Secret Catalogue, 537 U.S. 418, 433 (2003).  The Court further held that where the marks at issue are not identical, the mere fact that consumers mentally associate the junior user’s mark with a famous mark is not sufficient to establish actionable dilution because such mental association will not necessarily reduce the capacity of the famous mark to identify the goods of its owner.

In 2006, a new Act was passed expressly intended to overrule the Supreme Court interpretation of the old Act. The new statute provides that “likelihood of dilution” is enough to establish injunctive relief of the senior user of a mark. 15 U.S.C. § 1125(c)(1) (2006). The legislative record clearly stated that the Moseley standard creates an undue burden for trademark holders who contest diluting uses and should be revised, whereby the standard for proving a dilution claim is “likelihood of dilution” and that both dilution by blurring and dilution by tarnishment are actionable. U.S. Code Cong. & Adm. News, 109th Cong. 2d Sess. 2006, Vol. 4, pp. 1091, 1092, 1097.

Thus, while on remand from the Supreme Court, the District Court retroactively applied this new law and found dilution.  V Secret Catalogue Inc. v. Moseley, 87 USPQ2d 1240 (W.D. Ky. 2008).  The Court of Appeals for the Sixth Circuit, under the revised statutory requirement, held that “likelihood of dilution” is satisfied when junior mark was similar to the famous senior mark and due to there being evidence of possible semantic associations between the famous senior mark and junior mark by the general public without specific proof of tarnishment effects. V Secret Catalogue, Inc. v. Moseley, 2010 FED App. 0144P, 9 (6th Cir. 2010 ) aff’g V Secret Catalogue, Inc. v. Moseley, 558 F. Supp. 2d 734 ( W. D. Ky., 2008)) (finding the Moseley’s store cause dilution) under the established federal courts’ standard.  See 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”); Mattel, 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).  As such, the Sixth Circuit upheld the District Court’s finding of dilution.