LOUISVILLE, Ky. (AP) – If Victor’s got a little secret, he’ll have to keep it to himself.
A split federal appeals court upheld an injunction Wednesday barring a central Kentucky business owner from using the names “Victor’s Secret” and “Victor’s Little Secret” on an adult novelty and lingerie shop.
The U.S. 6th Circuit Court of Appeals in a 2-1 vote ruled that, under the Federal Trademark Dilution Act, the use of those names by the Elizabethtown, Ky., business cast an unflattering shadow on the Columbus, Ohio-based chain Victoria’s Secret and potentially hurts their business.
The ruling, one of the first under the law revised in 2006, leaves in place an injunction issued in 2008, barring Kentucky business owners Victor and Cathy Moseley from using the names at their shop about 45 minutes south of Louisville.
“The new law seems designed to protect trademarks from any unfavorable sexual association,” Judge Gilbert Merritt wrote for a 2-1 majority.
In a dissent, Judge Karen Nelson Moore said Victoria’s Secret can’t show it was hurt by the Kentucky shop’s play on the company name.
“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,” Moore wrote.
Messages left for Limited Brands Inc., the parent company of Victoria’s Secret, and for Victor and Cathy Moseley, the owners of the Kentucky shop, were not immediately returned Wednesday.
The case has been bouncing around the legal system for 12 years, since the Moseleys opened their shop.
U.S. District Judge Charles Simpson previously issued an injunction ordering the Moseleys to stop using the name in 1998, but the decision was overturned by the U.S. Supreme Court in 2003 and sent back for further proceedings. The Moseleys changed the name of the store to “Cathy’s Little Secret” in 2000, while the previous injunction was in place.
The case started when an Army colonel saw an ad for the opening of “Victor’s Secret” and sent it to Victoria’s Secret in Columbus.
The lingerie chain sued the Moseleys, who changed the name of the store to “Victor’s Little Secret,” but the national chain pressed on with the lawsuit. The store then became “Cathy’s Little Secret” in 2000.
The case centered on a legal standard called “dilution,” which courts have held as “the lessening of the capacity of a famous mark to identify and distinguish goods and services.” That’s what Victoria’s Secret claimed the Kentucky store was doing — lessening its ability to distinguish itself from competitors.
Since the ruling by the U.S. Supreme Court, Congress passed the Federal Trademark Dilution Act, which eliminated a requirement that company’s such as Victoria’s Secret show a trademark violation actually cost it money. Under the new law, Victoria’s Secret needed to show that its trademark was well known, registered and valuable and that it had been violated.