01-1015 Moseley, et al. v. V Secret Catalogue, Inc., et al.

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Respondents’ mark is unquestionably valuable, and petitioners have not challenged the conclusion that it is “famous.” Nor do they contend that protection is confined to identical uses of famous marks or that the statute should be construed more narrowly in a case such as this. They do contend, however, that the statute requires proof of actual harm, rather than mere “likelihood” of harm. The contrast between the state statutes and the federal statute sheds light on this precise question. The former repeatedly refer to a “likelihood” of harm, rather than a completed harm, but the FTDA provides relief if another’s commercial use of a mark or trade name “causes dilution of the [mark’s] distinctive quality,” º1125(c)(1). Thus, it unambiguously requires an actual dilution showing. This conclusion is confirmed by the FTDA’s “dilution” definition itself, º1127. That does not mean that the consequences of dilution, such as an actual loss of sales or profits, must also be proved. This Court disagrees with the Fourth Circuit’s Ringling Bros. decision to the extent it suggests otherwise, but agrees with that court’s conclusion that, at least where the marks at issue are not identical, the mere fact that consumers mentally associate the junior user’s mark with a famous mark is not sufficient to establish actionable dilution. Such association will not necessarily reduce the famous mark’s capacity to identify its owner’s goods, the FTDA’s dilution requirement.

259 F.3d 464, reversed and remanded.

Local effect:

The decision reverses current Seventh Circuit law, holding that a plaintiff need only show a likelihood of dilution, not proof of actual dilution, Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456 (7th Cir. 2000).

Stevens, J., Kennedy J., concurring.