OCTOBER TERM, 1999

															Syllabus

															WAL-MART STORES, INC. v. SAMARA BROTHERS, INC.

															CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE SECOND
CIRCUIT

															No. 99-150. Argued January 19, 2000-Decided March 22, 2000

															Respondent Samara Brothers, Inc., designs and manufactures a
line of children's clothing. Petitioner Wal-Mart Stores, Inc.,
contracted with a supplier to manufacture outfits based on
photographs of Samara garments. After discovering that Wal-Mart and
other retailers were selling the so-called knockoffs, Samara
brought this action for, inter alia, infringement of
unregistered trade dress under §43(a) of the Trademark Act of 1946
(Lanham Act). The jury found for Samara. Wal-Mart then renewed a
motion for judgment as a matter of law, claiming that there was
insufficient evidence to support a conclusion that Samara's
clothing designs could be legally protected as distinctive trade
dress for purposes of § 43(a). The District Court denied the motion
and awarded Samara relief. The Second Circuit affirmed the denial
of the motion. Held: In a § 43(a) action for infringement of
unregistered trade dress, a product's design is distinctive, and
therefore protectible, only upon a showing of secondary meaning.
Pp.209-216.

															(a) In addition to protecting registered trademarks, the Lanham
Act, in § 43(a), gives a producer a cause of action for the use by
any person of "any ... symbo[l] or device ... likely to cause
confusion ... as to the origin ... of his or her goods." The
breadth of the confusion-producing elements actionable under §
43(a) has been held to embrace not just word marks and symbol
marks, but also "trade dress"-a category that originally included
only the packaging, or "dressing," of a product, but in recent
years has been expanded by many Courts of Appeals to encompass the
product's design. These courts have correctly assumed that trade
dress constitutes a "symbol" or "device" for Lanham Act purposes.
Although § 43(a) does not explicitly require a producer to show
that its trade dress is distinctive, courts have universally
imposed that requirement, since without distinctiveness the trade
dress would not "cause confusion ... as to ... origin," as § 43(a)
requires. In evaluating distinctiveness, courts have differentiated
between marks that are inherently distinctive-i. e., marks
whose intrinsic nature serves to identify their particular
source-and marks that have acquired distinctiveness through
secondary meaning-i. e., marks whose primary significance,
in the minds of the public, is to identify the product's source
rather than 206 206 WAL-MART STORES, INC. v. SAMARA BROTHERS, INC.

															Syllabus

															the product itself. This Court has held, however, that
applications of at least one category of mark-color-can never be inherently distinctive, although they can be
protected upon a showing of secondary meaning. Qualitex Co. v. Jacobson Products Co., 514 U. S. 159 , 162-163.
Pp. 209-212.

															(b) Design, like color, is not inherently distinctive. The
attribution of inherent distinctiveness to certain categories of
word marks and product packaging derives from the fact that the
very purpose of attaching a particular word to a product, or
encasing it in a distinctive package, is most often to identify the
product's source. Where it is not reasonable to assume consumer
predisposition to take an affixed word or packaging as indication
of source, inherent distinctiveness will not be found. With product
design, as with color, consumers are aware of the reality that,
almost invariably, that feature is intended not to identify the
source, but to render the product itself more useful or more
appealing. Pp.212-214.

															(c) Two Pesos, Inc. v. Taco Cabana, Inc., 505 U. S. 763 , does not
foreclose the Court's conclusion, since the trade dress there at
issue was restaurant decor, which does not constitute product design, but rather product packaging or else some tertium
quid that is akin to product packaging and has no bearing on
the present case. While distinguishing Two Pesos might force
courts to draw difficult lines between product-design and
product-packaging trade dress, the frequency and difficulty of
having to distinguish between the two will be much less than the
frequency and difficulty of having to decide when a product design
is inherently distinctive. To the extent there are close cases,
courts should err on the side of caution and classify ambiguous
trade dress as product design, thereby requiring secondary meaning.
Pp. 214-215. 165 F.3d
120 , reversed and remanded.

															SCALIA, J., delivered the opinion for a unanimous Court. William D. Coston argued the cause for petitioner. With
him on the briefs were Kenneth C. Bass III and Martin L. Saad. Deputy Solicitor General Wallace argued the cause for the United
States as amicus curiae urging reversal. With him on the brief were
Solicitor General Waxman, Acting Assistant Attorney General Ogden,
Edward C. DuMont, Barbara C. Biddle, Alfred Mollin, Albin F. Drost,
and Nancy C. Slutter. 207 Stuart M. Riback argued the cause for respondent. With
him on the brief was Mark 1. Levy. * JUSTICE SCALIA delivered the opinion of the Court.

															In this case, we decide under what circumstances a product's
design is distinctive, and therefore protectible, in an action for
infringement of unregistered trade dress under § 43(a) of the
Trademark Act of 1946 (Lanham Act), 60 Stat. 441, as amended, 15 U.
S. C. § 1125(a).

															I

															Respondent Samara Brothers, Inc., designs and manufactures
children's clothing. Its primary product is a line of spring/summer
one-piece seersucker outfits decorated with appliques of hearts,
flowers, fruits, and the like. A number of chain stores, including
JCPenney, sell this line of clothing under contract with
Samara.

															Petitioner Wal-Mart Stores, Inc., is one of the Nation's best
known retailers, selling among other things children's clothing. In
1995, Wal-Mart contracted with one of its suppliers,
Judy-Philippine, Inc., to manufacture a line of children's outfits
for sale in the 1996 spring/summer season. Wal-Mart sent
Judy-Philippine photographs of a number of garments from Samara's
line, on which Judy-Philippine's garments were to be based;
Judy-Philippine duly copied, with

															*Briefs of amici curiae urging reversal were filed for
the International Mass Retail Association by Jeffrey S. Sutton and Robert J. Verdisco; for the
Private Label Manufacturers Association by Arthur M.
Handler; and for Scott P. Zimmerman by Charles W
Calkins. H. Bartow Farr III, Richard G. Taranto, and Stephen M. Trattner filed a brief for Ashley Furniture
Industries, Inc., et al. as amici curiae urging
affirmance.

															Briefs of amici curiae were filed for the American
Intellectual Property Law Association by Sheldon H. Klein,
Michael A. Grow, and Louis T. Pirkey; for the
International Trademark Association by Theodore H. Davis, Jr.,
Morton D. Goldberg, and Marie V. Driscoll; and for
Payless Shoesource, Inc., by William A. Rudy and Robert
Kent Sellers. 208 208 WAL-MART STORES, INC. v. SAMARA BROTHERS, INC.

															only minor modifications, 16 of Samara's garments, many of which
contained copyrighted elements. In 1996, Wal-Mart briskly sold the
so-called knockoffs, generating more than $1.15 million in gross
profits.

															In June 1996, a buyer for JCPenney called a representative at
Samara to complain that she had seen Samara garments on sale at
Wal-Mart for a lower price than JCPenney was allowed to charge
under its contract with Samara. The Samara representative told the
buyer that Samara did not supply its clothing to Wal-Mart. Their
suspicions aroused, however, Samara officials launched an
investigation, which disclosed that Wal-Mart and several other
major retailersKmart, Caldor, Hills, and Goody's-were selling the
knockoffs of Samara's outfits produced by Judy-Philippine.

															After sending cease-and-desist letters, Samara brought this
action in the United States District Court for the Southern
District of New York against Wal-Mart, Judy-Philippine, Kmart,
Caldor, Hills, and Goody's for copyright infringement under federal
law, consumer fraud and unfair competition under New York law,
and-most relevant for our purposesinfringement of unregistered
trade dress under § 43(a) of the Lanham Act, 15 U. S. C. § 1125(a).
All of the defendants except Wal-Mart settled before trial.

															After a weeklong trial, the jury found in favor of Samara on all
of its claims. Wal-Mart then renewed a motion for judgment as a
matter of law, claiming, inter alia, that there was
insufficient evidence to support a conclusion that Samara's
clothing designs could be legally protected as distinctive trade
dress for purposes of § 43(a). The District Court denied the
motion, 969 F. Supp. 895 (SDNY 1997), and awarded Samara damages,
interest, costs, and fees totaling almost $1.6 million, together
with injunctive relief, see App. to Pet. for Cert. 56-58. The
Second Circuit affirmed the denial of the motion for judgment as a
matter of law, 165 F.3d
120 (1998), and we granted certiorari, 528 U. S. 808
(1999). 209 II

															The Lanham Act provides for the registration of trademarks,
which it defines in § 45 to include "any word, name, symbol, or
device, or any combination thereof [used or intended to be used] to
identify and distinguish [a producer's] goods ... from those
manufactured or sold by others and to indicate the source of the
goods .... " 15 U. S. C. § 1127. Registration of a mark under § 2
of the Lanham Act, 15 U. S. C. § 1052, enables the owner to sue an
infringer under § 32, 15 U. S. C. § 1114; it also entitles the
owner to a presumption that its mark is valid, see § 7(b), 15 U. S.
C. § 1057(b), and ordinarily renders the registered mark
incontestable after five years of continuous use, see § 15, 15 U.
S. C. § 1065. In addition to protecting registered marks, the
Lanham Act, in § 43(a), gives a producer a cause of action for the
use by any person of "any word, term, name, symbol, or device, or
any combination thereof ... which ... is likely to cause confusion
... as to the origin, sponsorship, or approval of his or her goods
.... " 15 U. S. C. § 1125(a). It is the latter provision that is at
issue in this case.

															The breadth of the definition of marks registrable under § 2,
and of the confusion-producing elements recited as actionable by §
43(a), has been held to embrace not just word marks, such as
"Nike," and symbol marks, such as Nike's "swoosh" symbol, but also
"trade dress" -a category that originally included only the
packaging, or "dressing," of a product, but in recent years has
been expanded by many Courts of Appeals to encompass the design of
a product. See, e. g., Ashley Furniture Industries, Inc. v. Sangiacomo N. A., Ltd., 187 F.3d
363 (CA4 1999) (bedroom furniture); Knitwaves,
Inc. v. Lolly togs, Ltd., 71 F.3d
996 (CA2 1995) (sweaters); Stuart Hall Co., Inc. v. Ampad Corp., 51 F.3d
780 (CA8 1995) (notebooks). These courts have assumed,
often without discussion, that trade dress constitutes a "symbol"
or "device" for purposes of the relevant sections, and we conclude
likewise. "Since human beings might use as a 'symbol' 210 210 WAL-MART STORES, INC. v. SAMARA BROTHERS, INC.

															or 'device' almost anything at all that is capable of carrying
meaning, this language, read literally, is not restrictive." Qualitex Co. v. Jacobson Products Co., 514 U. S. 159 , 162
(1995). This reading of § 2 and § 43(a) is buttressed by a recently
added subsection of § 43(a), § 43(a)(3), which refers specifically
to "civil action[s] for trade dress infringement under this chapter
for trade dress not registered on the principal register." 15 U. S.
C. § 1125(a)(3) (1994 ed., Supp. V).

															The text of § 43(a) provides little guidance as to the
circumstances under which unregistered trade dress may be
protected. It does require that a producer show that the allegedly
infringing feature is not "functional," see § 43 (a)(3), and is
likely to cause confusion with the product for which protection is
sought, see § 43(a)(1)(A), 15 U. S. C. § 1125(a)(1)(A). Nothing in
§ 43(a) explicitly requires a producer to show that its trade dress
is distinctive, but courts have universally imposed that
requirement, since without distinctiveness the trade dress would
not "cause confusion ... as to the origin, sponsorship, or approval
of [the] goods," as the section requires. Distinctiveness is,
moreover, an explicit prerequisite for registration of trade dress
under § 2, and "the general principles qualifying a mark for
registration under § 2 of the Lanham Act are for the most part
applicable in determining whether an unregistered mark is entitled
to protection under § 43(a)." Two Pesos, Inc. v. Taco
Cabana, Inc., 505
U. S. 763 , 768 (1992) (citations omitted).

															In evaluating the distinctiveness of a mark under § 2 (and
therefore, by analogy, under § 43(a)), courts have held that a mark
can be distinctive in one of two ways. First, a mark is inherently
distinctive if "[its] intrinsic nature serves to identify a
particular source." Ibid. In the context of word marks,
courts have applied the now-classic test originally formulated by
Judge Friendly, in which word marks that are "arbitrary" ("Camel"
cigarettes), "fanciful" ("Kodak" film), or "suggestive" ("Tide"
laundry detergent) are held to be inher- 211 ently distinctive. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d
4 , 10-11 (CA2 1976). Second, a mark has acquired
distinctiveness, even if it is not inherently distinctive, if it
has developed secondary meaning, which occurs when, "in the minds
of the public, the primary significance of a [mark] is to identify
the source of the product rather than the product itself." Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U. S. 844 ,
851, n. 11 (1982).*

															The judicial differentiation between marks that are inherently
distinctive and those that have developed secondary meaning has
solid foundation in the statute itself. Section 2 requires that
registration be granted to any trademark "by which the goods of the
applicant may be distinguished from the goods of others"-subject to
various limited exceptions. 15 U. S. C. § 1052. It also provides,
again with limited exceptions, that "nothing in this chapter shall
prevent the registration of a mark used by the applicant which has
become distinctive of the applicant's goods in commerce"-that is,
which is not inherently distinctive but has become so only through
secondary meaning. § 2(f), 15 U. S. C. § 1052(f). Nothing in § 2,
however, demands the conclusion that every category of mark
necessarily includes some marks "by which the goods of the
applicant may be distinguished from the goods of others" without secondary meaning-that in every category some marks
are inherently distinctive.

															Indeed, with respect to at least one category of markcolors-we
have held that no mark can ever be inherently distinctive. See Qualitex, supra, at 162-163. In Qualitex, *The phrase "secondary meaning" originally arose in the context
of word marks, where it served to distinguish the
source-identifying meaning from the ordinary, or "primary," meaning
of the word. "Secondary meaning" has since come to refer to the
acquired, source-identifying meaning of a nonword mark as well. It
is often a misnomer in that context, since nonword marks ordinarily
have no "primary" meaning. Clarity might well be served by using
the term "acquired meaning" in both the wordmark and the
nonword-mark contexts-but in this opinion we follow what has become
the conventional terminology. 212 212 WAL-MART STORES, INC. v. SAMARA BROTHERS, INC.

															petitioner manufactured and sold green-gold dry-cleaning press
pads. After respondent began selling pads of a similar color,
petitioner brought suit under § 43(a), then added a claim under §
32 after obtaining registration for the color of its pads. We held
that a color could be protected as a trademark, but only upon a
showing of secondary meaning. Reasoning by analogy to the Abercrombie & Fitch test developed for word
marks, we noted that a product's color is unlike a "fanciful,"
"arbitrary," or "suggestive" mark, since it does not "almost automatically tell a customer that [it] refer[s] to a
brand," 514 U. S., at 162-163, and does not "immediately ... signal
a brand or a product 'source,'" id., at 163. However, we
noted that, "over time, customers may come to treat a particular
color on a product or its packaging ... as signifying a brand." Ibid. Because a color, like a "descriptive" word mark, could
eventually "come to indicate a product's origin," we concluded that
it could be protected upon a showing of secondary meaning.
Ibid. It seems to us that design, like color, is not inherently
distinctive. The attribution of inherent distinctiveness to certain
categories of word marks and product packaging derives from the
fact that the very purpose of attaching a particular word to a
product, or encasing it in a distinctive packaging, is most often
to identify the source of the product. Although the words and
packaging can serve subsidiary functions-a suggestive word mark
(such as "Tide" for laundry detergent), for instance, may invoke
positive connotations in the consumer's mind, and a garish form of
packaging (such as Tide's squat, brightly decorated plastic bottles
for its liquid laundry detergent) may attract an otherwise
indifferent consumer's attention on a crowded store shelf-their
predominant function remains source identification. Consumers are
therefore predisposed to regard those symbols as indication of the
producer, which is why such symbols "almost automatically tell a customer that they refer to a brand," id., at
162-163, and "immediately ... signal a brand 213 or a product 'source,'" id., at 163. And where it is not
reasonable to assume consumer predisposition to take an affixed
word or packaging as indication of source-where, for example, the
affixed word is descriptive of the product ("Tasty" bread) or of a
geographic origin ("Georgia" peaches)-inherent distinctiveness will
not be found. That is why the statute generally excludes, from
those word marks that can be registered as inherently distinctive,
words that are "merely descriptive" of the goods, § 2(e)(1), 15 U.
S. C. § 1052(e)(1), or "primarily geographically descriptive of
them," see § 2(e)(2), 15 U. S. C. § 1052(e)(2). In the case of
product design, as in the case of color, we think consumer
predisposition to equate the feature with the source does not
exist. Consumers are aware of the reality that, almost invariably,
even the most unusual of product designs-such as a cocktail shaker
shaped like a penguin-is intended not to identify the source, but
to render the product itself more useful or more appealing.

															The fact that product design almost invariably serves purposes
other than source identification not only renders inherent
distinctiveness problematic; it also renders application of an
inherent-distinctiveness principle more harmful to other consumer
interests. Consumers should not be deprived of the benefits of
competition with regard to the utilitarian and esthetic purposes
that product design ordinarily serves by a rule of law that
facilitates plausible threats of suit against new entrants based
upon alleged inherent distinctiveness. How easy it is to mount a
plausible suit depends, of course, upon the clarity of the test for
inherent distinctiveness, and where product design is concerned we
have little confidence that a reasonably clear test can be devised.
Respondent and the United States as amicus curiae urge us to
adopt for product design relevant portions of the test formulated
by the Court of Customs and Patent Appeals for product packaging in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.
2d 1342 (1977). That opinion, in determining the inherent
distinctiveness of a product's packaging, considered, among 214 214 WAL-MART STORES, INC. v. SAMARA BROTHERS, INC.

															other things, "whether it was a 'common' basic shape or design,
whether it was unique or unusual in a particular field, [and]
whether it was a mere refinement of a commonlyadopted and
well-known form of ornamentation for a particular class of goods
viewed by the public as a dress or ornamentation for the goods." Id., at 1344 (footnotes omitted). Such a test would rarely
provide the basis for summary disposition of an anticompetitive
strike suit. Indeed, at oral argument, counsel for the United
States quite understandably would not give a definitive answer as
to whether the test was met in this very case, saying only that
"[t]his is a very difficult case for that purpose." Tr. of Oral
Arg. 19.

															It is true, of course, that the person seeking to exclude new
entrants would have to establish the nonfunctionality of the design
feature, see § 43(a)(3), 15 U. S. C. § 1125(a)(3) (1994 ed., Supp.
V)-a showing that may involve consideration of its esthetic appeal,
see Qualitex, supra, at 170. Competition is deterred,
however, not merely by successful suit but by the plausible threat
of successful suit, and given the unlikelihood of inherently
source-identifying design, the game of allowing suit based upon
alleged inherent distinctiveness seems to us not worth the candle.
That is especially so since the producer can ordinarily obtain
protection for a design that is inherently source
identifying (if any such exists), but that does not yet have
secondary meaning, by securing a design patent or a copyright for
the design-as, indeed, respondent did for certain elements of the
designs in this case. The availability of these other protections
greatly reduces any harm to the producer that might ensue from our
conclusion that a product design cannot be protected under § 43(a)
without a showing of secondary meaning.

															Respondent contends that our decision in Two Pesos forecloses a conclusion that product-design trade dress can never
be inherently distinctive. In that case, we held that the trade
dress of a chain of Mexican restaurants, which the plaintiff
described as "a festive eating atmosphere having 215 interior dining and patio areas decorated with artifacts, bright
colors, paintings and murals," 505 U. S., at 765 (internal
quotation marks and citation omitted), could be protected under §
43(a) without a showing of secondary meaning, see id., at
776. Two Pesos unquestionably establishes the legal
principle that trade dress can be inherently distinctive, see, e. g., id., at 773, but it does not establish that product-design trade dress can be. Two Pesos is
inapposite to our holding here because the trade dress at issue,
the decor of a restaurant, seems to us not to constitute product design. It was either product packaging-which, as we have
discussed, normally is taken by the consumer to indicate
origin-or else some tertium quid that is akin to product
packaging and has no bearing on the present case.

															Respondent replies that this manner of distinguishing Two
Pesos will force courts to draw difficult lines between
product-design and product-packaging trade dress. There will indeed
be some hard cases at the margin: a classic glass Coca-Cola bottle,
for instance, may constitute packaging for those consumers who
drink the Coke and then discard the bottle, but may constitute the
product itself for those consumers who are bottle collectors, or
part of the product itself for those consumers who buy Coke in the
classic glass bottle, rather than a can, because they think it more
stylish to drink from the former. We believe, however, that the
frequency and the difficulty of having to distinguish between
product design and product packaging will be much less than the
frequency and the difficulty of having to decide when a product
design is inherently distinctive. To the extent there are close
cases, we believe that courts should err on the side of caution and
classify ambiguous trade dress as product design, thereby requiring
secondary meaning. The very closeness will suggest the existence of
relatively small utility in adopting an inherent-distinctiveness
principle, and relatively great consumer benefit in requiring a
demonstration of secondary meaning. 216 216 WAL-MART STORES, INC. v. SAMARA BROTHERS, INC.

															***

															We hold that, in an action for infringement of unregistered
trade dress under § 43(a) of the Lanham Act, a product's design is
distinctive, and therefore protectible, only upon a showing of
secondary meaning. The judgment of the Second Circuit is reversed,
and the case is remanded for further proceedings consistent with
this opinion.

															It is so ordered.

Summary: Wal-Mart Stores, Inc. v. Samara Brothers, Inc. (2000) concerned the question of whether a product's design could be protected as "trade dress" under Section 43(a) of the Trademark Act of 1946 (Lanham Act) without a showing of secondary meaning. The Supreme Court held that a product's design can only be protected as trade dress under Section 43(a) if it possesses secondary meaning, meaning the public primarily associates the design with the product's source rather than the product itself. This decision established an important distinction between product packaging, which can be inherently distinctive and protected without secondary meaning, and product design, which requires secondary meaning for protection.


OCTOBER TERM, 2002

															Syllabus

															MOSELEY ET AL., DBA VICTOR'S LITTLE SECRET v. V SECRET CATALOGUE, INC., ET AL.

															CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE SIXTH
CIRCUIT

															No. 01-1015. Argued November 12, 2002-Decided March 4, 2003

															An army colonel sent a copy of an advertisement for petitioners'
retail store, "Victor's Secret," to respondents, affiliated
corporations that own the VICTORIA'S SECRET trademarks, because he
saw it as an attempt to use a reputable trademark to promote
unwholesome, tawdry merchandise. Respondents asked petitioners to
discontinue using the name, but petitioners responded by changing
the store's name to "Victor's Little Secret." Respondents then
filed suit, alleging, inter alia, "the dilution of famous
marks" under the Federal Trademark Dilution Act (FTDA). This 1995
amendment to the Trademark Act of 1946 describes the factors that
determine whether a mark is "distinctive and famous," 15 U. S. C. §
1125(c)(1), and defines "dilution" as "the lessening of the
capacity of a famous mark to identify and distinguish goods or
services," § 1127. To support their claims that petitioners'
conduct was likely to "blur and erode" their trademark's
distinctiveness and "tarnish" its reputation, respondents presented
an affidavit from a marketing expert who explained the value of
respondents' mark but expressed no opinion concerning the impact of
petitioners' use of "Victor's Little Secret" on that value. The
District Court granted respondents summary judgment on the FTDA
claim, and the Sixth Circuit affirmed, finding that respondents'
mark was "distinctive" and that the evidence established "dilution"
even though no actual harm had been proved. It also rejected the
Fourth Circuit's conclusion that the FTDA "requires proof that (1)
a defendant has [used] a junior mark sufficiently similar to the
famous mark to evoke in ... consumers a mental association of the
two that (2) has caused (3) actual economic harm to the famous
mark's economic value by lessening its former selling power as an
advertising agent for its goods or services," Ringling
Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d
449 , 461.

															Held:

															(a) Unlike traditional infringement law, the prohibitions
against trademark dilution are not the product of common-law
development, and are not motivated by an interest in protecting
consumers. The approximately 25 state trademark dilution laws
predating the FTDA refer both 419 to injury to business reputation (tarnishment) and to dilution
of the distinctive quality of a trademark or trade name (blurring).
The FTDA's legislative history mentions that the statute's purpose
is to protect famous trademarks from subsequent uses that blur the
mark's distinctiveness or tarnish or disparage it, even absent a
likelihood of confusion. pp. 428-431.

															(b) 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," § 1125(c)(1) (emphasis added).
Thus, it unambiguously requires an actual dilution showing. This
conclusion is confirmed by the FTDA's "dilution" definition itself,
§ 1127. 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. pp. 432-434.

															2. The evidence in this case is insufficient to support summary
judgment on the dilution count. There is a complete absence of
evidence of any lessening of the VICTORIA'S SECRET mark's capacity
to identify and distinguish goods or services sold in Victoria's
Secret stores or advertised in its catalogs. The officer who saw
the ad directed his offense entirely at petitioners, not
respondents. And respondents' expert said nothing about the impact
of petitioners' name on the strength of respondents' mark. Any
difficulties of proof that may be entailed in demonstrating actual
dilution are not an acceptable reason for dispensing 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
respect to Parts I, II, and IV, and the opinion of the Court with
respect to Part III, 420 in which REHNQUIST, C. J., and O'CONNOR, KENNEDY, SOUTER,
THOMAS, GINSBURG, and BREYER, JJ., joined. KENNEDY, J., filed a
concurring opinion, post, p. 435. James R. Higgins, Jr., argued the cause for
petitioners.

															With him on the briefs was Scot A. Duvall. Walter Dellinger argued the cause for respondents. With
him on the brief was Jonathan D. Hacker. Deputy Solicitor General Wallace argued the cause for the United
States as amicus curiae. With him on the brief were Solicitor
General Olson, Assistant Attorney General McCallum, Irving L.
Gornstein, Anthony J. Steinmeyer, Mark S. Davies, John M. Whealan,
Nancy C. Slutter, Cynthia C. Lynch, and James R. Hughes.*

															JUSTICE STEVENS delivered the opinion of the Court.t

															In 1995 Congress amended § 43 of the Trademark Act of 1946, 15
U. S. C. § 1125, to provide a remedy for the "dilution of famous
marks." 109 Stat. 985-986. That amendment, known as the Federal
Trademark Dilution Act (FTDA), describes the factors that determine
whether a mark is "dis-

															* Peter Jaszi filed a brief for Public Knowledge et al.
as amici curiae urging reversal.

															Briefs of amici curiae urging affirmance were filed for
the American Bar Association by Robert E. Hirshon, Robert W
Sacoff, and Uli Widmaier; for the American Intellectual
Property Law Association by Jonathan Hudis, Amy C. Sullivan, and Roger W Parkhurst; for Best Western
International, Inc., et al. by Avraham Azrieli, Joel W Nomkin,
Charles A. Blanchard, and Suzanne R. Scheiner; for Intel
Corp. by Jerrold J. Ganzfried, Mark I. Levy, and Thomas L. Casagrande; for Andrew Beckerman-Rodau et al. by Mark A. Lemley, pro se; for the Intellectual Property Owners
Association by Laurence R. Hefter, Elizabeth McGoogan, and Ronald E. Myrick; for the International Trademark
Association by Theodore H. Davis, Jr., and Marie V.
Driscoll; and for Ringling Bros.Barnum & Bailey Combined
Shows, Inc., et al. by Robert A. Long, Jr. Malla Pollack, pro se, filed a brief as amicus
curiae. tJUSTICE SCALIA joins all but Part III of this
opinion. 421 tinctive and famous," and defines the term "dilution" as "the
lessening of the capacity of a famous mark to identify and
distinguish goods or services." 1 The question we granted

															IThe FTDA provides: "SEC. 3. REMEDIES FOR DILUTION OF FAMOUS
MARKS.

															"(a) REMEDIEs.-Section 43 of the Trademark Act of 1946 (15 U. S.
C. 1125) is amended by adding at the end the following new
subsection:

															"'(c)(I) The owner of a famous mark shall be entitled, subject
to the principles of equity and upon such terms as the court deems
reasonable, to an injunction against another person's commercial
use in commerce of a mark or trade name, if such use begins after
the mark has become famous and causes dilution of the distinctive
quality of the mark, and to obtain such other relief as is provided
in this subsection. In determining whether a mark is distinctive
and famous, a court may consider factors such as, but not limited
to-

															"'(A) the degree of inherent or acquired distinctiveness of the
mark; "'(B) the duration and extent of use of the mark in
connection with the goods or services with which the mark is
used; "'(C) the duration and extent of advertising and
publicity of the mark; "'(D) the geographical extent of the trading
area in which the mark is used;

															"'(E) the channels of trade for the goods or services with which
the mark is used;

															"'(F) the degree of recognition of the mark in the trading areas
and channels of trade used by the marks' owner and the person
against whom the injunction is sought;

															'''(G) the nature and extent of use of the same or similar marks
by third parties; and

															"'(H) whether the mark was registered under the Act of March 3,
1881, or the Act of February 20, 1905, or on the principal
register.

															"'(2) In an action brought under this subsection, the owner of
the famous mark shall be entitled only to injunctive relief unless
the person against whom the injunction is sought willfully intended
to trade on the owner's reputation or to cause dilution of the
famous mark. If such willful intent is proven, the owner of the
famous mark shall also be entitled to the remedies set forth in
sections 35(a) and 36, subject to the discretion of the court and
the principles of equity.

															"'(3) The ownership by a person of a valid registration under
the Act of March 3, 1881, or the Act of February 20, 1905, or on
the principal register shall be a complete bar to an action against
that person, with respect to that mark, that is brought by another
person under the common 422 certiorari to decide is whether objective proof of actual injury
to the economic value of a famous mark (as opposed to a presumption
of harm arising from a subjective "likelihood of dilution"
standard) is a requisite for relief under the FTDA.

															I

															Petitioners, Victor and Cathy Moseley, own and operate a retail
store named "Victor's Little Secret" in a strip mall in
Elizabethtown, Kentucky. They have no employees.

															Respondents are affiliated corporations that own the VICTORIA'S
SECRET trademark and operate over 750 Victoria's Secret stores, two
of which are in Louisville, Kentucky, a short drive from
Elizabethtown. In 1998 they spent over $55 million advertising "the
VICTORIA'S SECRET brandone of moderately priced, high quality,
attractively designed lingerie sold in a store setting designed to
look like a wom-

															law or a statute of a State and that seeks to prevent dilution
of the distinctiveness of a mark, label, or form of
advertisement.

															'''(4) The following shall not be actionable under this
section:

															"'(A) Fair use of a famous mark by another person in comparative
commercial advertising or promotion to identify the competing goods
or services of the owner of the famous mark.

															'''(B) Noncommercial use of a mark. "'(C) All forms of news reporting and news
commentary.'

															"(b) CONFORMING AMENDMENT.-The heading for title VIII of the
Trademark Act of 1946 is amended by striking 'AND FALSE
DESCRIPTIONS' and inserting " FALSE DESCRIPTIONS, AND DILUTION.'
"SEC. 4. DEFINITION.

															"Section 45 of the Trademark Act of 1946 (15 U. S. C. 1127) is
amended by inserting after the paragraph defining when a mark shall
be deemed to be 'abandoned' the following:

															"'The term "dilution" means the lessening of the capacity of a
famous mark to identify and distinguish goods or services,
regardless of the presence or absence of-

															"'(1) competition between the owner of the famous mark and other
parties, or

															'''(2) likelihood of confusion, mistake, or deception.' " 109
Stat. 985-986. 423 [a]n's bedroom." App. 167, 170. They distribute 400 million
copies of the Victoria's Secret catalog each year, including 39,000
in Elizabethtown. In 1998 their sales exceeded $1.5 billion.

															In the February 12, 1998, edition of a weekly publication
distributed to residents of the military installation at Fort Knox,
Kentucky, petitioners advertised the "GRAND OPENING Just in time
for Valentine's Day!" of their store "VICTOR'S SECRET" in nearby
Elizabethtown. The ad featured "Intimate Lingerie for every
woman"; "Romantic Lighting"; "Lycra Dresses"; "Pagers"; and
"Adult Novelties/ Gifts." Id., at 209. An army colonel, who
saw the ad and was offended by what he perceived to be an attempt
to use a reputable company's trademark to promote the sale of
"unwholesome, tawdry merchandise," sent a copy to respondents. Id., at 210. Their counsel then wrote to petitioners stating
that their choice of the name "Victor's Secret" for a store selling
lingerie was likely to cause confusion with the well-known
VICTORIA'S SECRET mark and, in addition, was likely to "dilute the
distinctiveness" of the mark. Id., at 190-191. They
requested the immediate discontinuance of the use of the name "and
any variations thereof." Ibid. In response, petitioners
changed the name of their store to "Victor's Little Secret."
Because that change did not satisfy respondents,2 they promptly
filed this action in Federal District Court.

															The complaint contained four separate claims: (1) for trademark
infringement alleging that petitioners' use of their trade name was
"likely to cause confusion and/or mistake in violation of 15 U. S.
C. § 1114(1)"; (2) for unfair competition alleging
misrepresentation in violation of § 1125(a);

															2 After being advised of a proposal to change the store name to
"VICTOR'S LITTLE SECRETS," respondents' counsel requested detailed
information about the store in order to consider whether that
change "would be acceptable." App. 13-14. Respondents filed suit
two months after this request. 424 (3) for "federal dilution" in violation of the FTDA; and (4) for
trademark infringement and unfair competition in violation of the
common law of Kentucky. Id., at 15, 20-23. In the dilution
count, the complaint alleged that petitioners' conduct was "likely
to blur and erode the distinctiveness" and "tarnish the reputation"
of the VICTORIA'S SECRET trademark. Ibid. After discovery the parties filed cross-motions for summary
judgment. The record contained uncontradicted affidavits and
deposition testimony describing the vast size of respondents'
business, the value of the VICTORIA'S SECRET name, and descriptions
of the items sold in the respective parties' stores. Respondents
sell a "complete line of lingerie" and related items, each of which
bears a VICTORIA'S SECRET label or tag.3 Petitioners sell a wide
variety of items, including adult videos, "adult novelties," and
lingerie.4 Victor Moseley stated in an affidavit that women's
lingerie represented only about five percent of their sales. Id., at 131. In support of their motion for summary
judgment, respondents submitted an affidavit by an expert in
marketing who explained "the enormous value" of respondents'mark. Id., at 195-205. Neither he, nor any other witness,
expressed any opinion concerning the impact, if any,

															3 Respondents described their business as follows: "Victoria's
Secret stores sell a complete line of lingerie, women's
undergarments and nightwear, robes, caftans and kimonos, slippers,
sachets, lingerie bags, hanging bags, candles, soaps, cosmetic
brushes, atomizers, bath products and fragrances." Id., at
168.

															4 In answer to an interrogatory, petitioners stated that they
"sell novelty action clocks, patches, temporary tattoos, stuffed
animals, coffee mugs, leather biker wallets, zippo lighters, diet
formula, diet supplements, jigsaw puzzles, whyss, handcufs [sic],
hosiery bubble machines, greeting cards, calendars, incense
burners, car air fresheners, sunglasses, ball caps, jewelry,
candles, lava lamps, blacklights, fiber optic lights, rock and roll
prints, lingerie, pagers, candy, adult video tapes, adult
novelties, t-shirts, etc." Id., at 87. 425 of petitioners' use of the name "Victor's Little Secret" on that
value.

															Finding that the record contained no evidence of actual
confusion between the parties' marks, the District Court concluded
that "no likelihood of confusion exists as a matter of law" and
entered summary judgment for petitioners on the infringement and
unfair competition claims. Civ. Action No. 3:98CV-395-S (WD Ky.,
Feb. 9,2000), App. to Pet. for Cert. 28a, 37a. With respect to the
FTDA claim, however, the court ruled for respondents.

															Noting that petitioners did not challenge Victoria's Secret's
claim that its mark is "famous," the only question it had to decide
was whether petitioners' use of their mark diluted the quality of
respondents' mark Reasoning from the premise that dilution
"corrodes" a trademark either by " 'blurring its product
identification or by damaging positive associations that have
attached to it,'" the court first found the two marks to be
sufficiently similar to cause dilution, and then found "that
Defendants' mark dilutes Plaintiffs' mark because of its tarnishing
effect upon the Victoria's Secret mark" Id., at 38a-39a
(quoting Ameritech, Inc. v. American Info. Technologies
Corp., 811 F.2d
960 , 965 (CA6 1987)). It therefore enjoined petitioners
"from using the mark 'Victor's Little Secret' on the basis that it
causes dilution of the distinctive quality of the Victoria's Secret
mark" App. to Pet. for Cert. 38a-39a. The court did not, however,
find that any "blurring" had occurred. Ibid. The Court of Appeals for the Sixth Circuit affirmed. 259 F.3d
464 (2001). In a case decided shortly after the entry of the
District Court's judgment in this case, the Sixth Circuit had
adopted the standards for determining dilution under the FTDA that
were enunciated by the Second Circuit in Nabisco, Inc. v. PF Brands, Inc., 191 F.3d
208 (1999). See Kellogg Co. v. Exxon Corp., 209 F.3d
562 (CA6 2000). In order to apply those standards, it
was necessary to discuss 426 two issues that the District Court had not specifically
addressed-whether respondents' mark is "distinctive," 5 and whether
relief could be granted before dilution has actually occurred.6
With respect to the first issue, the court rejected the argument
that Victoria's Secret could not be distinctive because "secret" is
an ordinary word used by hundreds of lingerie concerns. The court
concluded that the entire mark was "arbitrary and fanciful" and
therefore deserving of a high level of trademark protection. 259 F.
3d, at 470.7 On

															5 "It is quite clear that the statute intends distinctiveness,
in addition to fame, as an essential element. The operative
language defining the tort requires that 'the [junior] person's ...
use ... caus[e] dilution of the distinctive quality of the [senior]
mark.' 15 U. S. C. § 1125(c)(I). There can be no dilution of a
mark's distinctive quality unless the mark is distinctive." Nabisco, Inc. v. PF Brands, Inc., 191 F.3d
208 , 216 (CA2 1999). 6 The Second Circuit explained why it did not believe "actual
dilution" need be proved:

															"Relying on a recent decision by the Fourth Circuit, Nabisco
also asserts that proof of dilution under the FTDA requires proof
of an 'actual, consummated harm.' Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Division of
Travel Dev., 170 F.3d
449 , 464 (4th Cir. 1999). We reject the argument because we
disagree with the Fourth Circuit's interpretation of the
statute.

															"It is not clear which of two positions the Fourth Circuit
adopted by its requirement of proof of 'actual dilution.' Id. The narrower position would be that courts may not infer
dilution from 'contextual factors (degree of mark and product
similarity, etc.),' but must instead rely on evidence of 'actual
loss of revenues' or the 'skillfully constructed consumer survey.' Id. at 457, 464-65. This strikes us as an arbitrary and
unwarranted limitation on the methods of proof." Id., at
223.

															7 "In this case, for example, although the word 'secret' may
provoke some intrinsic association with prurient interests, it is
not automatically linked in the ordinary human experience with
lingerie. 'Secret' is not particularly descriptive of bras and
hosiery. Nor is there anything about the combination of the
possessive 'Victoria's' and 'secret' that automatically conjures
thought of women's underwear-except, of course, in the context of
plaintiff's line of products. Hence, we conclude that the
'Victoria's Secret' mark ranks with those that are 'arbitrary and
fanciful' and is therefore deserving of a high level of trademark
protection. Although the district court applied a slightly
different test from the one now established 427 the second issue, the court relied on a distinction suggested by
this sentence in the House Report: "Confusion leads to immediate
injury, while dilution is an infection, which if allowed to spread,
will inevitably destroy the advertising value of the mark." H. R.
Rep. No. 104-374, p. 3 (1995). This statement, coupled with the
difficulty of proving actual harm, lent support to the court's
ultimate conclusion that the evidence in this case sufficiently
established "dilution." 259 F. 3d, at 475-477. In sum, the Court of
Appeals held: "While no consumer is likely to go to the Moseleys' store
expecting to find Victoria's Secret's famed Miracle Bra, consumers
who hear the name 'Victor's Little Secret' are likely automatically
to think of the more famous store and link it to the Moseleys'
adult-toy, gag gift, and lingerie shop. This, then, is a classic
instance of dilution by tarnishing (associating the Victoria's
Secret name with sex toys and lewd coffee mugs) and by blurring
(linking the chain with a single, unauthorized establishment).
Given this conclusion, it follows that Victoria's Secret would
prevail in a dilution analysis, even without an exhaustive
consideration of all ten of the Nabisco factors." Id., at 477.8 in this circuit, the court would undoubtedly have reached the
same result under the Nabisco test. Certainly, we cannot say
that the court erred in finding that the preliminary factors of a
dilution claim had been met by Victoria's Secret." 259 F. 3d, at
470-471.

															8 The court had previously noted that the "Second Circuit has
developed a list of ten factors used to determine if dilution has,
in fact, occurred, while describing them as a 'nonexclusive list'
to 'develop gradually over time' and with the particular facts of
each case. Those factors are: distinctiveness; similarity of the
marks; 'proximity of the products and the likelihood of bridging
the gap;' 'interrelationship among the distinctiveness of the
senior mark, the similarity of the junior mark, and the proximity
of the products;' 'shared consumers and geographic limitations;'
'sophistication of consumers;' actual confusion; 'adjectival or
referential quality of the junior use;' 'harm to the junior user
and delay by the senior user;' and the 'effect of [the] senior's
prior laxity in protecting the mark.'" Id., at 476 (quoting Nabisco, 191 F. 3d, at 217-222). 428 In reaching that conclusion the Court of Appeals expressly
rejected the holding of the Fourth Circuit in Ringling
Bros.Barnum & Bailey Combined Shows, Inc. v. Utah
Div. of Travel Development, 170 F.3d
449 (1999). In that case, which involved a claim that Utah's
use on its license plates of the phrase "greatest snow on
earth" was causing dilution of the "greatest show on earth,"
the court had concluded "that to establish dilution of a famous
mark under the federal Act requires proof that (1) a defendant has
made use of a junior mark sufficiently similar to the famous mark
to evoke in a relevant universe of consumers a mental association
of the two that (2) has caused (3) actual economic harm to the
famous mark's economic value by lessening its former selling power
as an advertising agent for its goods or services." Id., at
461 (emphasis added). Because other Circuits have also expressed
differing views about the "actual harm" issue, we granted
certiorari to resolve the conflict. 535 U. S. 985 (2002).

															II

															Traditional trademark infringement law is a part of the broader
law of unfair competition, see Hanover Star Milling Co. v. Metcalf, 240
U. S. 403 , 413 (1916), that has its sources in English common
law, and was largely codified in the Trademark Act of 1946 (Lanham
Act). See B. Pattishall, D. Hilliard, & J. Welch, Trademarks
and Unfair Competition 2 (4th ed. 2000) ("The United States took
the [trademark and unfair competition] law of England as its own").
That law broadly prohibits uses of trademarks, trade names, and
trade dress that are likely to cause confusion about the source of
a product or service. See 15 U. S. C. §§ 1114, 1125(a)(1)(A).
Infringement law protects consumers from being misled by the use of
infringing marks and also protects producers from unfair practices
by an "imitating competitor." Qualitex Co. Because respondents did not appeal the District Court's adverse
judgment on counts 1, 2, and 4 of their complaint, 429 we decide the case on the assumption that the Moseleys' use of
the name "Victor's Little Secret" neither confused any consumers or
potential consumers, nor was likely to do so. Moreover, the
disposition of those counts also makes it appropriate to decide the
case on the assumption that there was no significant competition
between the adversaries in this case. Neither the absence of any
likelihood of confusion nor the absence of competition, however,
provides a defense to the statutory dilution claim alleged in count
3 of the complaint.

															Unlike traditional infringement law, the prohibitions against
trademark dilution are not the product of commonlaw development,
and are not motivated by an interest in protecting consumers. The
seminal discussion of dilution is found in Frank Schechter's 1927
law review article concluding "that the preservation of the
uniqueness of a trademark should constitute the only rational basis
for its protection." Rational Basis of Trademark Protection, 40
Harv. L. Rev. 813, 831. Schechter supported his conclusion by
referring to a German case protecting the owner of the well-known
trademark "Odol" for mouthwash from use on various noncompeting
steel products.9 That case, and indeed the principal focus of the
Schechter article, involved an established arbitrary mark that had
been "added to rather than withdrawn from the human vocabulary" and
an infringement that made use of the identical mark. Id., at
829.10

															9 The German court "held that the use of the mark, 'ado!' even
on noncompeting goods was 'gegen die guten Sitten,' pointing
out that, when the public hears or reads the word 'Odol,' it thinks
of the complainant's mouth wash, and that an article designated
with the name 'ado!' leads the public to assume that it is of good
quality. Consequently, concludes the court, complainant has 'the
utmost interest in seeing that its mark is not diluted [verwassert}: it would lose in selling power if everyone
used it as the designation of his goods.''' 40 Harv. L. Rev., at
831-832.

															10 Schecter discussed this distinction at length: "The rule that
arbitrary, coined or fanciful marks or names should be given a much
broader degree of protection than symbols, words or phrases in
common use would appear 430 Some 20 years later Massachusetts enacted the first state

															statute protecting trademarks from dilution. It provided: "Likelihood of injury to business reputation or of dilution of
the distinctive quality of a trade name or trademark shall be a
ground for injunctive relief in cases of trade-mark infringement or
unfair competition notwithstanding the absence of competition
between the parties or of confusion as to the source of goods or
services." 1947 Mass. Acts p. 300, ch. 307. Notably, that statute, unlike the "Odol" case, prohibited both
the likelihood of "injury to business reputation" and "dilution."
It thus expressly applied to both "tarnishment" and "blurring." At
least 25 States passed similar laws in the decades before the FTDA
was enacted in 1995. See Restatement (Third) of Unfair Competition
§ 25, Statutory Note (1995).

															III

															In 1988, when Congress adopted amendments to the Lanham Act, it
gave consideration to an antidilution provision.

															to be entirely sound. Such trademarks or tradenames as 'Blue
Ribbon,' used, with or without registration, for all kinds of
commodities or services, more than sixty times; 'Simplex' more than
sixty times; 'Star,' as far back as 1898, nearly four hundred
times; 'Anchor,' already registered over one hundred fifty times in
1898; 'Bull Dog,' over one hundred times by 1923; 'Gold Medal,'
sixty-five times; '3-in-1' and '2-in-1,' seventy-nine times;
'Nox-all,' fifty times; 'Universal,' over thirty times; 'Lily
White' over twenty times;-all these marks and names have, at this
late date, very little distinctiveness in the public mind, and in
most cases suggest merit, prominence or other qualities of goods or
services in general, rather than the fact that the product or
service, in connection with which the mark or name is used,
emanates from a particular source. On the other hand,
'Rolls-Royce,' 'Aunt Jemima's,' 'Kodak,' 'Mazda,' 'Corona,'
'Nujol,' and 'Blue Goose,' are coined, arbitrary or fanciful words
or phrases that have been added to rather than withdrawn from the
human vocabulary by their owners, and have, from the very
beginning, been associated in the public mind with a particular
product, not with a variety of products, and have created in the
public consciousness an impression or symbol of the excellence of
the particular product in question." Id., at 828-829. 431 During the hearings on the 1988 amendments, objections to that
provision based on a concern that it might have applied to
expression protected by the First Amendment were voiced and the
provision was deleted from the amendments. H. R. Rep. No. 100-1028
(1988). The bill, H. R. 1295, 104th Cong., 1st Sess., that was
introduced in the House in 1995, and ultimately enacted as the
FTDA, included two exceptions designed to avoid those concerns: a
provision allowing "fair use" of a registered mark in comparative
advertising or promotion, and the provision that noncommercial use
of a mark shall not constitute dilution. See 15 U. S. C. §
1125(c)(4).

															On July 19, 1995, the Subcommittee on Courts and Intellectual
Property of the House Judiciary Committee held a i-day hearing on
H. R. 1295. No opposition to the bill was voiced at the hearing
and, with one minor amendment that extended protection to
unregistered as well as registered marks, the subcommittee endorsed
the bill and it passed the House unanimously. The committee's
report stated that the "purpose of H. R. 1295 is to protect famous
trademarks from subsequent uses that blur the distinctiveness of
the mark or tarnish or disparage it, even in the absence of a
likelihood of confusion." H. R. Rep. No. 104-374, p. 2 (1995). As
examples of dilution, it stated that "the use of DUPONT shoes,
BUICK aspirin, and KODAK pianos would be actionable under this
legislation." Id., at 3. In the Senate an identical bill, S.
1513, 104th Cong., 1st Sess., was introduced on December 29, 1995,
and passed on the same day by voice vote without any hearings. In
his explanation of the bill, Senator Hatch also stated that it was
intended "to protect famous trademarks from subsequent uses that
blur the distinctiveness of the mark or tarnish or disparage it,"
and referred to the Dupont Shoes, Buick aspirin, and Kodak piano
examples, as well as to the Schechter law review article. 141 Congo
Rec. 38559-38561 (1995). 432 IV

															The VICTORIA'S SECRET mark is unquestionably valuable and
petitioners have not challenged the conclusion that it qualifies as
a "famous mark" within the meaning of the statute. Moreover, as we
understand their submission, petitioners do not contend that the
statutory protection is confined to identical uses of famous marks,
or that the statute should be construed more narrowly in a case
such as this. Even if the legislative history might lend some
support to such a contention, it surely is not compelled by the
statutory text.

															The District Court's decision in this case rested on the
conclusion that the name of petitioners' store "tarnished" the
reputation of respondents' mark, and the Court of Appeals relied on
both "tarnishment" and "blurring" to support its affirmance.
Petitioners have not disputed the relevance of tarnishment, Tr. of
Oral Arg. 5-7, presumably because that concept was prominent in
litigation brought under state antidilution statutes and because it
was mentioned in the legislative history. Whether it is actually
embraced by the statutory text, however, is another matter. Indeed,
the contrast between the state statutes, which expressly refer to
both "injury to business reputation" and to "dilution of the
distinctive quality of a trade name or trademark," and the federal
statute which refers only to the latter, arguably supports a
narrower reading of the FTDA. See Klieger, Trademark Dilution: The
Whittling Away of the Rational Basis for Trademark Protection, 58
U. Pitt. L. Rev. 789, 812-813, and

															The contrast between the state statutes and the federal statute,
however, sheds light on the precise question that we must decide.
For those state statutes, like several provisions in the federal
Lanham Act, repeatedly refer to a "likelihood" of harm, rather than
to a completed harm. The relevant text of the FTDA, quoted in full
in n. 1, supra, provides that "the owner of a famous mark"
is entitled to injunctive 433 relief against another person's commercial use of a mark or
trade name if that use "causes dilution of the distinctive
quality" of the famous mark. 15 U. s. C. § 1125(c)(1) (emphasis
added). This text unambiguously requires a showing of actual
dilution, rather than a likelihood of dilution.

															This conclusion is fortified by the definition of the term

															"dilution" itself. That definition provides: "The term 'dilution' means the lessening of the capacity of a
famous mark to identify and distinguish goods or services,
regardless of the presence or absence of- "(1) competition between the owner of the famous mark and other
parties, or "(2) likelihood of confusion, mistake, or deception." §
1127. The contrast between the initial reference to an actual
"lessening of the capacity" of the mark, and the later reference to
a "likelihood of confusion, mistake, or deception" in the second
caveat confirms the conclusion that actual dilution must be
established.

															Of course, that does not mean that the consequences of dilution,
such as an actual loss of sales or profits, must also be proved. To
the extent that language in the Fourth Circuit's opinion in the Ringling Bros. case suggests otherwise, see 170 F. 3d, at
460-465, we disagree. We do agree, however, 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. As the facts of that case
demonstrate, such mental association will not necessarily reduce
the capacity of the famous mark to identify the goods of its owner,
the statutory requirement for dilution under the FTDA. For even
though Utah drivers may be reminded of the circus when they see a
license plate referring to the "greatest snow on earth," it
by no means follows that they will associate "the greatest show on
earth" 434 with skiing or snow sports, or associate it less strongly or
exclusively with the circus. "Blurring" is not a necessary
consequence of mental association. (Nor, for that matter, is
"tarnishing.")

															The record in this case establishes that an army officer who saw
the advertisement of the opening of a store named "Victor's Secret"
did make the mental association with "Victoria's Secret," but it
also shows that he did not therefore form any different impression
of the store that his wife and daughter had patronized. There is a
complete absence of evidence of any lessening of the capacity of
the VICTORIA'S SECRET mark to identify and distinguish goods or
services sold in Victoria's Secret stores or advertised in its
catalogs. The officer was offended by the ad, but it did not change
his conception of Victoria's Secret. His offense was directed
entirely at petitioners, not at respondents. Moreover, the expert
retained by respondents had nothing to say about the impact of
petitioners' name on the strength of respondents' mark.

															Noting that consumer surveys and other means of demonstrating
actual dilution are expensive and often unreliable, respondents and
their amici argue that evidence of an actual "lessening of
the capacity of a famous mark to identify and distinguish goods or
services," § 1127, may be difficult to obtain. It may well be,
however, that direct evidence of dilution such as consumer surveys
will not be necessary if actual dilution can reliably be proved
through circumstantial evidence-the obvious case is one where the
junior and senior marks are identical. Whatever difficulties of
proof may be entailed, they are not an acceptable reason for
dispensing with proof of an essential element of a statutory
violation. The evidence in the present record is not sufficient to
support the summary judgment on the dilution count. The judgment is
therefore reversed, and the case is remanded for further
proceedings consistent with this opinion.

															It is so ordered. 435 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 425, 432, 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 436 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.

Summary: The Supreme Court ruled that the "Victoria's Secret" trademark was diluted by a smaller retailer's use of "Victor's Secret" and "Victor's Little Secret," as it blurred and eroded the distinctiveness of the famous mark and tarnished its reputation, even without proof of actual economic harm. The Court clarified the requirements for trademark dilution under the Federal Trademark Dilution Act (FTDA), emphasizing the importance of protecting famous trademarks from subsequent uses that diminish their distinctiveness or reputation.