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Name Games: Victor's Little Secret vs. Victoria's Secret

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A small businessman's defense of the name used for his lingerie shop may one day reshape trademark law.

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His name was Victor. And his new retail project -- a lingerie and adult video store in Elizabethtown, Kentucky -- was kept quiet from his previous employer. Making it, by definition, a secret. So naturally, Victor Moseley and his wife Cathy named the new store "Victor's Secret." Who could possibly object to that?

The fact that lingerie giant Victoria's Secret sued Victor and Cathy Moseley for trademark infringement is no surprise. What is surprising is the number of twists and turns the case has taken since the initial complaint was filed. An apparently straightforward legal action has been anything but. The case climbed all the way to the US Supreme Court. But even that wasn't the biggest climax -- the Supes then sent it back to appeals court. In short, the case been going up and down like a bride's nightie. Thanks to new Congressional legislation, V Secret Catalogue Inc. v. Moseley is helping to define the issue of just what steps corporations can take to protect their sexy good name.

In an attempt to head off legal action, Victor Moseley initially changed the name of his shop to Victor's Little Secret (claiming that previously he had been unaware of that other, surprisingly similar name). It wasn't enough. A federal judge granted Victoria's Secret an injunction against the Moseleys, who were then forced to change the store name to Cathy's Secret.

But in 2003 the US Supreme Court reversed that decision, claiming that Victoria's Secret -- a subsidiary of Limited Brands (LTD), whose market cap is $8.6 billion -- had failed to prove any actual harm through this association with a store full of lubricants and naughty hosiery. The case was remanded back to the Sixth Circuit Court of Appeals. By the time that court got around to re-examining the case there was new legislation in place. In 2006 Congress enacted the Trademark Dilution Revision Act, apparently in response to the Supreme Court ruling. This made it easier for corporations to claim their trademarks had been "diluted" or "tarnished" by association with similar-sounding names. Using the new legislation as a guide, the appeals court ruled against the Moseleys last May.

Business must be pretty good at the little store though, because the Moseleys are still not giving up. Victor Moseley told the Cincinatti Enquirer: "If somebody doesn't stand up against them, they're going to ride roughshod over us."

In a telephone interview with Minyanville, Moseley said he feels Victoria's Secret has little moral ground to stand on, considering the look and feel of the brand's advertising and famously controversial fashion shows. "They're selling sex just like I sell sex," he said. "It's hard to tarnish a name that's already tarnished."

Does Moseley have a point? Here's a shot from the Victoria Secret Holiday 2010 shoot.





Besides, Moseley continues, "Those lawyers make it out as if we're some kind of back alley porn shop, which we're not. You can bring a six-year-old in here and she wouldn't see anything." Any products meant for adult eyes only are sold in a separate room, he explains.

His main point of contention, though, is related to what he sees as a civil right. "When they start telling me that I can't use my own name -- when they start infringing on my rights -- I have a problem," he says.

On November 1, Moseley filed a petition with the Supreme Court, asking that the case be reviewed. The court's response could yet define how the 2006 trademark legislation will be applied.

So remember Kentuckians -- when you buy that nipple ring or plus-size fantasy outfit, you are helping to protect the legal rights of American small business. And that will surely provide you with an extra little French tickle of pleasure.

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