The name of a retail store featuring adult novelties and gifts—"Victor's Little Secret"—was likely to cause dilution in the form of "tarnishment" of the famous "Victoria's Secret" mark owned by catalog sellers and the operators of a retail chain of lingerie stores, according to the U.S. Court of Appeals in Cincinnati. A decision of the federal district court in Louisville (TRADEMARK LAW GUIDE ¶61,248) was affirmed. The dilution claims previously had been rejected by the U.S. Supreme Court, which held that claimants under the Federal Trademark Dilution Act were required to show "actual dilution" in order to prevail (TRADEMARK LAW GUIDE ¶60,064). Following that decision, Congress enacted the Trademark Dilution Revision Act of 2006 (TDRA), which changed the standard for liability to "likelihood of dilution."

"Tarnishment" is an association arising from the similarity between a mark and a famous mark that harms the reputation of the famous mark. There was evidence that a consumer—an army colonel—had been offended by an advertisement for Victor's Little Secret because the sexually oriented business was semantically associating itself with "Victoria's Secret." Under the "likelihood of dilution" standard established by the TDRA, as well as a growing consensus in case law and commentary, there was a rebuttable presumption, or at least a very strong inference, that a new mark used to sell sex-related products was likely to tarnish a famous mark if there was a clear semantic association between the two, the court said. The defending retail store operators had had two opportunities in the district court to offer evidence rebutting the presumption or inference of tarnishment and had not done so, the court noted.

V Secret Catalogue, Inc., 6th Cir., ¶61,621.