V Secret Catalogue, Inc. v. Moseley, --- F.3d ----, 2010 WL 1979429 (6th Cir.)
Over a vigorous dissent, which seems to me entirely correct, the court here holds that even without any evidence of actual consumer impact, a “semantic association” between a famous mark and a mark used to sell “sexual toys, videos, and similar soft-core pornographic products” is sufficient to establish tarnishment. Because Congress intended to reduce the burden of proof on the trademark holder, there is “a kind of rebuttable presumption, or at least a very strong inference, that a new mark used to sell sex-related products is likely to tarnish a famous mark if there is a clear semantic association between the two.” The majority suggested that this “res ipsa loquitur-like effect … places on the owner of the new mark the burden of coming forward with evidence that there is no likelihood or probability of tarnishment,” which could be surveys or consumer testimony—even though, as the dissent pointed out, the only consumer perception evidence in the case was pretty clear that the consumer at issue didn’t think less of Victoria’s Secret, only of Victor’s Little Secret. Still, “[t]he new law seems designed to protect trademarks from any unfavorable sexual associations. Thus, any new mark with a lewd or offensive-to-some sexual association raises a strong inference of tarnishment.”
Judge Moore’s dissent pointed out that there’s a difference between changing the evidentiary requirement from a showing of actual tarnishment to one of likely tarnishment, which the FTDA did, and putting the burden of production or proof on the defendant, which it did not do. Though there is an association between Victoria’s Secret and Victor’s Little Secret, there was no evidence that this association was likely to harm Victoria’s Secret by altering or undermining its positive associations.
Honestly, as a matter of IP law, I expect no better from dilution cases. I’m more offended as a feminist. Apparently Victoria’s Secret’s “sexy and playful” reputation, which depends on women sexually displaying themselves—on selling women’s bodies as a tease—is to be protected against any suggestion that actual orgasms might be available. Sexualization (represented by Victoria’s Secret’s repeated invocation of “sexy”) is wholesome; “sex” is apparently not.