Opinion on the Moseley v. V Secret Catalogue Case
Opinion on the Moseley v. V Secret Catalogue Case
As the opinion delivered by Justice Stevens, the U.S. Supreme Court intended to answer the significant question in Moseley v. V Secret Catalogue, Inc. (Mosley case) that “whether objective proof of actual injury to the economic value of a famous mark is a requisite for relief under the 1996 Federal Trademark Dilution Act (FTDA)”. 1 Contrary to lower courts’ holdings, the Supreme Court stated in a unanimous decision that it is not enough to claim that another trademark is merely likely to dilute a famous trademark, and the standard for dilution requires a plaintiff to prove that another trademark actually causes dilution of the distinctive quality of a famous trademark. In my opinion, the above-mentioned holding not only lacks specificity but also is in the absence of convincing justification.
According to the Ringling case, the Fourth Circuit adopted the “actual dilution” standard, and stated a requirement of proof. 2 In relation to the Nabisco case3, the Second Circuit adopted the “likelihood of dilution” standard and believed that it was not appropriate to ask the plaintiff to prove the actual economic harm, which was later applied by the Six Circuit when dealing with the Mosley case.
Courts have room to develop trademark law, and they can set rules to supervise adjudication.4 In this case, although Justice Stevens tried to illustrate “dilution” based on the text of the FTDA, in order to resolve the split in the Circuits, and find a balance between “requirement of proof of actual economic loss” and “mentally associate”, in reaching its holding, the standard of “actual showing of dilution” is not unambiguous, notwithstanding it is obviously unfavorable to the famous trademark owners. When commenting on the type of evidence that might be sufficient to demonstrate “actual dilution”, it stated that “this does not mean that the consequences of dilution, such as an actual loss of sales or profits, must also be
As the opinion delivered by Justice Stevens, the U.S. Supreme Court intended to answer the significant question in Moseley v. V Secret Catalogue, Inc. (Mosley case) that “whether objective proof of actual injury to the economic value of a famous mark is a requisite for relief under the 1996 Federal Trademark Dilution Act (FTDA)”. 1 Contrary to lower courts’ holdings, the Supreme Court stated in a unanimous decision that it is not enough to claim that another trademark is merely likely to dilute a famous trademark, and the standard for dilution requires a plaintiff to prove that another trademark actually causes dilution of the distinctive quality of a famous trademark. In my opinion, the above-mentioned holding not only lacks specificity but also is in the absence of convincing justification.
According to the Ringling case, the Fourth Circuit adopted the “actual dilution” standard, and stated a requirement of proof. 2 In relation to the Nabisco case3, the Second Circuit adopted the “likelihood of dilution” standard and believed that it was not appropriate to ask the plaintiff to prove the actual economic harm, which was later applied by the Six Circuit when dealing with the Mosley case.
Courts have room to develop trademark law, and they can set rules to supervise adjudication.4 In this case, although Justice Stevens tried to illustrate “dilution” based on the text of the FTDA, in order to resolve the split in the Circuits, and find a balance between “requirement of proof of actual economic loss” and “mentally associate”, in reaching its holding, the standard of “actual showing of dilution” is not unambiguous, notwithstanding it is obviously unfavorable to the famous trademark owners. When commenting on the type of evidence that might be sufficient to demonstrate “actual dilution”, it stated that “this does not mean that the consequences of dilution, such as an actual loss of sales or profits, must also be