| Syllabus | Opinion [ Stevens ] | Concurrence [ Kennedy ] |
|---|---|---|
| HTML version PDF version | HTML version PDF version | HTML version PDF version |
VICTOR MOSELEY and CATHY MOSELEY, dba
VICTOR’S LITTLE SECRET, PETITIONERS v.
V SECRET CATALOGUE, INC., et al.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE SIXTH CIRCUIT
[March 4, 2003]
Justice Kennedy, concurring.
As of this date, few courts have reviewed the statute we are considering, the Federal Trademark Dilution Act, 15 U.S.C. § 1125(c), and I agree with the Court that the evidentiary showing required by the statute can be clarified on remand. The conclusion that the VICTORIA’S SECRET mark is a famous mark has not been challenged throughout the litigation, ante, at 6, 13, and seems not to be in question. The remaining issue is what factors are to be considered to establish dilution.
For this inquiry, considerable attention should be given, in my view, to the word “capacity” in the statutory phrase that defines dilution as “the lessening of the capacity of a famous mark to identify and distinguish goods or services.” 15 U.S.C. § 1127. When a competing mark is first adopted, there will be circumstances when the case can turn on the probable consequences its commercial use will have for the famous mark. In this respect, the word “capacity” imports into the dilution inquiry both the present and the potential power of the famous mark to identify and distinguish goods, and in some cases the fact that this power will be diminished could suffice to show dilution. Capacity is defined as “the power or ability to hold, receive, or accommodate.” Webster’s Third New International Dictionary 330 (1961); see also Webster’s New International Dictionary 396 (2d ed. 1949) (“Power of receiving, containing, or absorbing”); 2 Oxford English Dictionary 857 (2d ed. 1989) (“Ability to receive or contain; holding power”); American Heritage Dictionary 275 (4th ed. 2000) (“The ability to receive, hold, or absorb”). If a mark will erode or lessen the power of the famous mark to give customers the assurance of quality and the full satisfaction they have in knowing they have purchased goods bearing the famous mark, the elements of dilution may be established.
Diminishment of the famous mark’s capacity can be shown by the probable consequences flowing from use or adoption of the competing mark. This analysis is confirmed by the statutory authorization to obtain injunctive relief. 15 U.S.C. § 1125(c)(2). The essential role of injunctive relief is to “prevent future wrong, although no right has yet been violated.” Swift & Co. v. United States, 276 U.S. 311, 326 (1928). Equity principles encourage those who are injured to assert their rights promptly. A holder of a famous mark threatened with diminishment of the mark’s capacity to serve its purpose should not be forced to wait until the damage is done and the distinctiveness of the mark has been eroded.
In this case, the District Court found that petitioners’ trademark had tarnished the VICTORIA’S SECRET mark. App. to Pet. for Cert. 38a—39a. The Court of Appeals affirmed this conclusion and also found dilution by blurring. 259 F.3d 464, 477 (CA6 2001). The Court’s opinion does not foreclose injunctive relief if respondents on remand present sufficient evidence of either blurring or tarnishment.
With these observations, I join the opinion of the Court.