537 U.S. 418 (U.S. Supreme Court 2003)
Moseley v. V Secret Catalogue, Inc.
Under the Federal Trademark Dilution Act of 1995, must a plaintiff prove actual dilution of a famous mark's capacity to identify and distinguish goods or services, or is a showing of a mere likelihood of dilution sufficient to obtain injunctive relief?
Under the FTDA (pre-2006), a plaintiff seeking injunctive relief must show: (1) ownership of a famous and distinctive mark; (2) the defendant's commercial use of a mark or trade name in commerce after the plaintiff's mark became famous; and (3) actual dilution of the famous mark's capacity to identify and distinguish goods or services (by blurring or tarnishment). A mere likelihood of dilution is insufficient. Actual dilution does not require proof of actual loss of sales or profits, but it requires evidence that the distinctiveness of the famous mark has in fact been lessened. 15 U.S.C. § 1125(c) (1995).
Reversed and remanded. The FTDA requires proof of actual dilution, not merely a likelihood of dilution. On the record presented, Victoria's Secret did not establish actual dilution of its famous mark.
Moseley set the pre-TDRA baseline: under the FTDA, plaintiffs needed proof of actual dilution, imposing a significant evidentiary burden and making summary judgment more difficult without surveys or strong circumstantial evidence. The decision sharpened the distinction between confusion-based infringement and dilution, underscoring that dilution protects a famous mark's distinctiveness even absent confusion or competition, but that protection was not triggered by mere risk or association. The practical import was profound. Many courts found plaintiffs could not meet the actual-dilution standard without surveys or near-identical marks. In response, Congress enacted the Trademark Dilution Revision Act of 2006, which replaced the Moseley standard with a "likelihood of dilution" test, defined the concepts of dilution by blurring and tarnishment, and clarified defenses (e.g., fair use, news reporting, and noncommercial use). For students, Moseley illustrates textualism in statutory interpretation, the role of evidentiary burdens in shaping substantive rights, and how judicial decisions can precipitate legislative amendment.