SCOTUS ruling on trademark laws - Victor's Secret beats Victoria's, nine-to-nothing

Associated Press | March 4, 2003

[HAL9000]

(Supreme Court-AP) -- Nobody would ever confuse Victor with Victoria.

The Supreme Court used that reasoning today as it ruled against the lingerie-seller called Victoria's Secret.

The company had sued a small store in Kentucky that sold sex toys and adult videos -- and had called itself ''Victor's Secret.''

When Victoria's Secret complained, Victor's Secret agreed to change its name to Victor's Little Secret. That wasn't good enough -- so Victoria's Secret sued.

But the court found no proof that the small Kentucky store had harmed the trademark of Victoria's Secret.

The justices agreed unanimously that there needs to be evidence of actual harm in order for them to rule against a company with a sound-alike name.

Copyright 2003 by The Associated Press. All Rights Reserved.

[HAL9000]

A bunch of lawyers are going to freak out over this decision. A lot of trademarks and Internet domain names could be affected.

[gridlock]

Evidence! We need more evidence!

[AntiGuv]

A bunch of lawyers are going to freak out over this decision.

In that case, the Supremes done good...

[freedomcrusader]

When Victoria's Secret complained, Victor's Secret agreed to change its name to Victor's Little Secret.

So the owner of Victor's Secret tried to be reasonable, but the idiots at Victoria's Secret sued anyway. This sounds more like "keep the lawyers at Victoria's Secret busy and employed" than a real case.

[ShadowAce]

... but the idiots at Victoria's Secret sued anyway....

yeah--if you lived near Columbus, OH, you'd know all about Les Wexner and his money. He uses his own money to alter city/state highway development plans so his little projects get more traffic. I wouldn't work for him if he was the last employer on earth.

[tom h]

McDonald's has been doing this for years. It's been suing mom-and-pop restaurants, hardware stores, and you-name-it small, inoffensive establishments nationwide. All of them were owned by someone with the surname McDonald. Maybe Victoria's Secret employs the same law firm. Sheesh.

[tom h]

"Evidence! We need more evidence!"

Gridlock, I'll just refer you to the following URL for evidence of Victoria's Secret injury. If I post the evidence myself, my wife might take away my computer:

http://www.victoriassecret.com/

Okay, okay, I'll post one. Shhh!!!

[Johnny Gage]

Sounds like a good precedence for the rejection of the Microsoft lawsuit over "Lindows"

[Atlas Sneezed]

Do you really think that you have the right to start selling cars under your own name, Mr. Robert Ford? If you do, then anyone wishing to sponge off the goodwill generated by billions in sales and advertising investment could do that by simply involving a partner with the right name, undermining trademark law.

Victor's store was obviously trying to benefit from the association with the trademark of another business.

The law does not allow you the right to use your own name as a trademark. There is a simple solution. PICK ANOTHER TRADEMARK, perhaps one that would have been picked if Victoria's or Ford had not ever created their own mark and good will.

[Atlas Sneezed]

Here is the opinion. Typical of the lay press, the story deceives the reader.

http://www.supremecourtus.gov/opinions/02pdf/01-1015.pdf

The opinion merely holds that the court below needs to have evidence of actual harm to Victoria's Secret, and that the grant of Summary Judgement was premature without such a finding.

VS will take the case back down, and will probably win after presenting the kind of evidence that wins trademark infringement lawsuits every day.

The little guy did NOT win. He simply managed to turn a quick end of his trademark infringement into a prolonged and expensive end.

[ScottL.]

A few years ago I read through the often hilarious two best-selling volumes of Letters From a Nut by "Ted L. Nancy" (rumored to be Jerry Seinfeld, who wrote the intro material), collections of facsimiles of actual letters written by Mr. Nancy to various companies and agencies, with detailed proposals outlining Mr. Nancy's business and personal plans (requesting permission of a hotel chain, for example, to allow him to bring his own kitchen-sized fridge with him when lodging, or asking a bus company to allow him to travel on board while costumed as a giant stick of butter [or banana, I forget which]. The letters in reply, by turns equally whimsical or in sober warning, were often as amusing as the initial letters themselves.

Two episodes from those books came to mind this morning when I heard a radio report about a trademark-dilution case decided by the Supreme Court. In one, Mr. Nancy wrote, I think, to Coke and Pepsi about his plans to bottle his own low-calorie colas (projected names: "Kiet Doke" and "Piet Depsi"). In the other, he hoped to open a tiny eatery with slot machines across the road from Nevada's much larger Whiskey Pete's (he intended to call his joint "Whiskey Pat's", and after receiving a warning letter from Whiskey Pete's, offered to "compromise" by switching to "Bourbon Joe's").

So when I heard an NPR news announcer this morning describe a Supreme Court decision over a dispute between Victoria's Secret and a mom-and-pop Kentucky sex-toy emporium (which called itself at one point "Victor's Little Secret"), I knew that for me to read such a story on-air without laughing might prove well-nigh impossible.

[CyberSpartacus]

You are sadly mistaken. A corporation cannot deprive someone of their own name. As a matter of fact, in order for it to be a trademark violation. The person would need to have a logo that was similar. After all we are talking about a trade MARK. No corporation or individual can lay claim to a word in perpetuity.

[Dont Mention the War]

Time to register "amuhzon.com"!

[Atlas Sneezed]

You are sadly mistaken. A corporation cannot deprive someone of their own name. As a matter of fact, in order for it to be a trademark violation. The person would need to have a logo that was similar. After all we are talking about a trade MARK. No corporation or individual can lay claim to a word in perpetuity.

You are sadly mistaken (and dangerously confident that your assumptions reflect the law.) Most registered trademarks are for the words/text alone, irrespoctive of font, logo, or design. A lay person might assume that because famous marks use familiar logos, that this means that one needs a logo for protection, but I can assure you that you can't sell cars under the "Ford" name, or drinks under the "Coke" name, even if your logo style is entirely different.

And while a company's trademark ("mark" referring to the word and not necessarily the design) can't stop you from using you name, it CAN stop you from selling related goods or services using that name as a mark.

Trust me. Or read a book on the subject. Or speak to an intellectual property attorney.

[Atlas Sneezed]

"You are sadly mistaken."

PS: You might not like the law, but please don't mis-state it.

[jammer]

Who'd shop at Victor's Little Secret? They should go for Victor's Hugh Secret.

[jammer]

Misspelling on purpose for the hit squad.

[chilepepper]

Send the UN inspectors... the SM expert can do his "thing".

[jammer]

What are you talking about, "post one". Looks like 2 to me!

[tom h]

"What are you talking about, "post one". Looks like 2 to me!"

Gosh, I'm slow today. It took me a minute to figure out what you were talking about. Middle-aged mental limitations ...