537US2Unit:$U22[04-14-04 21:25:11] PAGES PGT:OPIN418 OCTOBER TERM, 2002SyllabusMOSELEY et al., dba VICTOR’S LITTLE SECRET v.V SECRET CATALOGUE, INC., et al.certiorari to the united states court of appeals forthe sixth circuitNo. 01–1015. Argued November 12, 2002—Decided March 4, 2003An army colonel sent a copy of an advertisement for petitioners’ retailstore, “Victor’s Secret,” to respondents, affiliated corporations that ownthe VICTORIA’S SECRET trademarks, because he saw it as an at-tempt to use a reputable trademark to promote unwholesome, tawdrymerchandise. Respondents asked petitioners to discontinue using thename, but petitioners responded by changing the store’s name to “Vic-tor’s Little Secret.” Respondents then filed suit, alleging, inter alia,“the dilution of famous marks” under the Federal Trademark DilutionAct (FTDA). This 1995 amendment to the Trademark Act of 1946 de-scribes the factors that determine whether a mark is “distinctive andfamous,” 15 U. S. C. § 1125(c)(1), and defines “dilution” as “the lesseningof the capacity of a famous mark to identify and distinguish goods orservices,” § 1127. To support their claims that petitioners’ conduct waslikely to “blur and erode” their trademark’s distinctiveness and “tar-nish” its reputation, respondents presented an affidavit from a market-ing expert who explained the value of respondents’ mark but expressedno opinion concerning the impact of petitioners’ use of “Victor’s LittleSecret” on that value. The District Court granted respondents sum-mary judgment on the FTDA claim, and the Sixth Circuit affirmed,finding that respondents’ mark was “distinctive” and that the evidenceestablished “dilution” even though no actual harm had been proved. Italso rejected the Fourth Circuit’s conclusion that the FTDA “requiresproof that (1) a defendant has [used] a junior mark sufficiently similarto the famous mark to evoke in . . . consumers a mental association ofthe two that (2) has caused (3) actual economic harm to the famousmark’s economic value by lessening its former selling power as an adver-tising agent for its goods or services,” Ringling Bros.-Barnum & BaileyCombined Shows, Inc. v. Utah Div. of Travel Dev., 170 F. 3d 449, 461.Held:1. The FTDA requires proof of actual dilution. Pp. 428–434.(a) Unlike traditional infringement law, the prohibitions againsttrademark dilution are not the product of common-law development, andare not motivated by an interest in protecting consumers. The approxi-mately 25 state trademark dilution laws predating the FTDA refer both537US2Unit:$U22[04-14-04 21:25:11] PAGES PGT:OPIN419Cite as: 537 U. S. 418 (2003)Syllabusto injury to business reputation (tarnishment) and to dilution of thedistinctive quality of a trademark or trade name (blurring). TheFTDA’s legislative history mentions that the statute’s purpose is to pro-tect famous trademarks from subsequent uses that blur the mark’sdistinctiveness or tarnish or disparage it, even absent a likelihood ofconfusion. Pp. 428–431.(b) Respondents’ mark is unquestionably valuable, and petitionershave not challenged the conclusion that it is “famous.” Nor do theycontend that protection is confined to identical uses of famous marks orthat the statute should be construed more narrowly in a case such asthis. They do contend, however, that the statute requires proof of ac-tual harm, rather than mere “likelihood” of harm. The contrast be-tween the state statutes and the federal statute sheds light on this pre-cise question. The former repeatedly refer to a “likelihood” of harm,rather than a completed harm, but the FTDA provides relief if another’scommercial use of a mark or trade name “causes dilution of the [mark’s]distinctive quality,” § 1125(c)(1) (emphasis added). Thus, it unambigu-ously requires an actual dilution showing. This conclusion is confirmedby the FTDA’s “dilution” definition itself, § 1127. That does not meanthat the consequences of dilution, such as an actual loss of sales orprofits, must also be proved. This Court disagrees with the FourthCircuit’s Ringling Bros. decision to the extent it suggests otherwise, butagrees with that court’s conclusion that, at least where the marks atissue are not identical, the mere fact that consumers mentally associatethe junior user’s mark with a famous mark is not sufficient to establishactionable dilution. Such association will not necessarily reduce the fa-mous mark’s capacity to identify its owner’s goods, the FTDA’s dilutionrequirement. Pp. 432–434.2. The evidence in this case is insufficient to support summaryjudgment on the dilution count. There is a complete absence of evi-dence of any lessening of the VICTORIA’S SECRET mark’s capacity toidentify and distinguish goods or services sold in Victoria’s Secret storesor advertised in its catalogs. The officer who saw the ad directed hisoffense entirely at petitioners, not respondents. And respondents’ ex-pert said nothing about the impact of petitioners’ name on the strengthof respondents’ mark. Any difficulties of proof that may be entailedin demonstrating actual dilution are not an acceptable reason for dis-pensing with proof of an essential element of a statutory violation.P. 434.259 F. 3d 464, reversed and remanded.Stevens, J., delivered the opinion for a unanimous Court with respectto Parts I, II, and IV, and the opinion of the Court with respect to Part III,537US2Unit:$U22[04-14-04 21:25:11] PAGES PGT:OPIN420 MOSELEY v. V SECRET CATALOGUE, INC.Opinion of the Courtin which Rehnquist, C. J., and O’Connor, Kennedy, Souter, Thomas,Ginsburg, and Breyer, JJ., joined. Kennedy, J., filed a concurringopinion, post, p. 435.James R. Higgins, Jr., argued the cause for petitioners.With him on the briefs was Scot A. Duvall.Walte r Dellinger argued the cause for respondents. Withhim on the brief was Jonathan D. Hacker.Deputy Solicitor General Wallace argued the cause forthe United States as amicus curiae. With him on the briefwere Solicitor General Olson, Assistant Attorney GeneralMcCallum, Irving L. Gornstein, Anthony J. Steinmeyer,Mark S. Davies, John M. Whea lan, Nancy C. Slutter, Cyn-thia C. Lynch, and James R. Hughes.*Justice Stevens delivered the opinion of the Court.†In 1995 Congress amended § 43 of the Trademark Act of1946, 15 U. S. C. § 1125, to provide a remedy for the “dilutionof famous marks.” 109
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