The Supreme Court: Trademark for Sex Shop

Trademark for Sex Shop

Trademark cases tend to get a lot more publicity because they usually involve some well-known marketing identification that is being used by a less well-known commercial entity. Victoria's Secret, known for its lingerie sold in stores and by catalog, thought its brand name was being harmed by a small local sex shop called “Victor's Secret.” The shop's owner, Victor Moseley, contended that the name was chosen because he wanted to keep his business secret from his former employer when he first opened the store with his wife.

The case started in 1998 when Victor Moseley and his wife Cathy opened “Victor's Secret” as an adult store in Kentucky. Victoria's Secret asked them to cease and desist using their trademark, so the Moseleys changed the name to “Victor's Little Secret.” Victoria's Secret still was not satisfied and filed a suit claiming its trademark was being harmed by the store.

Victoria's Secret won the case in district court. The Moseleys challenged the ruling in the 6th Circuit Court, saying that Victoria's Secret had failed to prove it sustained any economic harm. The circuit court ruled it was not necessary to prove economic harm, so the Moseleys took the case to the Supreme Court in a case titled, Moseley et al., dba Victor's Little Secret v. V Secret Catalogue, Inc., et al.

The Supreme Court ruled unanimously on March 4, 2003, in favor of the Moseleys. Writing the majority opinion, Justice Stevens said:

  • “There is a complete absence of evidence of any lessening of the VICTORIA'S SECRET mark's capacity to identify and distinguish goods or services sold in Victoria's Secret stores or advertised in its catalogs.”

The Supreme Court did not offer companies any clear guidelines for proving harm though, so this issue is likely to make its way to the Court again to settle the issue of proof.

Protecting private property rights is a long-standing tradition in this country, and protecting these rights sometimes falls in direct opposition to the needs of society. As land for development becomes more and more scarce, issues involving development will continue to wind their way through the courts and likely again be brought to the doorstep of the Supreme Court until a rule is perfected that clearly gives the lower courts a precedent to follow.

Property rights involving copyrights and patents also will be continually questioned as new technologies are invented and used. No doubt future cases will involve new inventions that find new ways to use people's property that raise questions of who owns what rights.

In the next section, we'll explore Supreme Court decisions that impacted the education of our children.

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Excerpted from The Complete Idiot's Guide to The Supreme Court © 2004 by Lita Epstein, J.D.. All rights reserved including the right of reproduction in whole or in part in any form. Used by arrangement with Alpha Books, a member of Penguin Group (USA) Inc.