Sex Toy Retailer Can't Tarnish Chain's Trademark, U.S. Appeals Court Rules

LOUISVILLE, Ky. — A federal appeals court ruled Wednesday that a sex toy and exotic lingerie shop can't use the names “Victor’s Secret” or “Victor’s Little Secret.”

The 6th U.S. Circuit Court of Appeals ruled, 2-1, that the Elizabethtown, Ky., store could potentially hurt the national retailer Victoria’s Secret under the Federal Trademark Dilution Act.

The decision leaves in place an injunction issued in 2008 that bars business owners Victor and Cathy Moseley from using either of the names.

The 12-year-old case pitting Columbia, Ohio-based Victoria's Secret against the Moseleys focuses on dilution by tarnishment under the Trademark Dilution Revision Act of 2006.

The 6th Circuit in an appeal questioned whether Victoria’s Secret had a valid suit for injunctive relief. A lower court concluded that even though the two parties do not compete in the same market, the Victor’s Little Secret mark — because it is sex related — disparages and tends to reduce the positive associations and the “selling power” of the Victoria’s Secret mark.

"The new law seems designed to protect trademarks from any unfavorable sexual associations," said Judge Gilbert Merritt, who wrote for the majority in the opinion. "Thus, any new mark with a lewd or offensive-to-some sexual association raises a strong inference of tarnishment.

"The inference must be overcome by evidence that rebuts the probability that some consumers will find the new mark both offensive and harmful to the reputation and the favorable symbolism of the famous mark."

The ruling leaves in place an injunction issued in 2008 that bars the Moseleys from using either of the names.