Chanel, Inc. v. Jerzy Makarczyk

This Opinion is a Mailed:

May 27, 2014

Precedent of the TTAB

United States Patent and Trademark Office

Trademark Trial and Appeal Board

________

Chanel, Inc.

v.

Jerzy Makarczyk

________

Opposition No. 91208352

to application Serial No. 85600670

_______

Barbara A. Solomon and Anna Leipsic of Fross Zelnick Lehrman & Zissu, P.C.

for Chanel, Inc.

Jerzy Makarczyk, pro se.1

_______

Before Cataldo, Lykos and Masiello, Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:

On April 17, 2012, Jerzy Makarczyk (“applicant”), a Canadian citizen,

filed an application pursuant to Section 1(a) of the Trademark Act to register

the mark CHANEL in standard character format for “real estate development

and construction of commercial, residential and hotel property” in Interna-

1

At the parties’ discovery conference, the Board recommended that applicant obtain

legal counsel experienced in trademark matters to represent him in this proceeding.

Board Discovery Conference Order (February 20, 2013).

Opposition No. 91208352

tional Class 37.2 The application alleges May 15, 2008 as the date of first use

anywhere and in commerce.

Chanel, Inc. (“opposer”) opposed the registration of applicant’s mark on

the grounds of likelihood of dilution by blurring under Section 43(c) of the

Trademark Act, 15 U.S.C. § 1125(c); likelihood of confusion under Section 2(d)

of the Trademark Act, 15 U.S.C. § 1052(d); and false suggestion of a connec-

tion under Trademark Act Section 2(a), 15 U.S.C. § 1152(a). Opposer alleged

that by virtue of its use and promotion of the CHANEL mark for over 90

years, its mark is “extraordinarily famous and well-known throughout the

United States, is inherently distinctive, and has become associated exclusively

with opposer.” Notice of Opposition ¶ 22. Opposer submitted with its notice of

opposition copies of the following registrations, taken from the U.S. Patent

and Trademark Office’s (“USPTO”) Trademark Status and Document Retriev-

al (“TSDR”) database, thereby making them of record pursuant to Trademark

Rule 2.122(d)(1).

Registration No. 302690 for the mark CHANEL in stylized format for

“soap” in International Class 3, registered on April 25, 1933;

Registration No. 510992 for the mark CHANEL in stylized format for

“perfume, face powder, bath powder and lipsticks” in International

Class 3, registered on June 14, 1939;

Registration No. 612169 for the mark CHANEL in stylized format for

“necklaces” in International Class 14, registered on September 13,

1955;

2

Application Serial No. 85600670.

-2-

Opposition No. 91208352

Registration No. 902190 for the mark CHANEL3 for “bracelets, pins

and earrings” in International Class 14, registered on November 19,

1970;

Registration No. 906262 for the mark CHANEL for “coats, suits, blous-

es and scarves” in International Class 25, registered on January 19,

1971;

Registration No. 1177400 for the mark CHANEL for “hats, shawls and

belts” in International Class 25, registered on November 10, 1981;

Registration No. 1241265 for the mark CHANEL for “suits, jackets,

skirts” in International Class 25, registered on June 7, 1983;

Registration No. 1263845 for the mark CHANEL for “retail store ser-

vices in the field of clothing and accessories” in International Class 42,

registered on January 10, 1984 under Section 2(f) of the Trademark

Act;

Registration No. 1347677 for the mark CHANEL for “leather goods,

namely, handbags” in International Class 18, registered on July 9,

1985;

Registration No. 1348842 for the mark CHANEL for “full line of per-

fumery, cosmetics and toiletries” in International Class 3, registered on

July 16, 1985;

Registration No. 1510757 for the mark CHANEL for “sunglasses” in In-

ternational Class 9, registered on November 1, 1988;

Registration No. 1571787 for the mark CHANEL for “watches” in In-

ternational Class 14, registered on December 19, 1989 under Section

2(f) of the Trademark Act;

Registration No. 1647875 for the mark CHANEL for “keychains” in In-

ternational Class 6, registered on June 18, 1991;

3

This and the remainder of opposer’s pleaded registrations are for the mark

CHANEL in typed format. “Prior to November 2, 2003, ‘standard character’ drawings

were known as ‘typed’ drawings. A typed mark is the legal equivalent of a standard

character mark.” Trademark Manual of Examining Procedure (“TMEP”) § 807.03(i)

(Oct. 2013). See In re Hitachi High-Technologies Corp., 109 USPQ2d 1769, 1771 n.2

(TTAB 2014).

-3-

Opposition No. 91208352

Registration No. 1660866 for the mark CHANEL for “make-up brushes”

in International Class 21, registered on October 15, 1991; and

Registration No. 1733051 for the mark CHANEL for “leather goods;

namely, handbags, wallets, travel bags, luggage, business and credit

card cases, change purses, tote bags, cosmetic bags sold empty, and

garment bags for travel” in International Class 18, registered on No-

vember 17, 1992.4

In his answer to the notice of opposition, applicant admitted opposer’s

ownership of its pleaded registrations as well as the allegation that appli-

cant’s applied-for mark is identical to opposer’s registered CHANEL mark. In

addition, applicant admitted the following:

17. There has never been any relationship between Applicant and

Opposer and Opposer never authorized or consented to Appli-

cant’s use or application to register the CHANEL mark opposed

here.

30. Chanel is not connected with Applicant, Applicant’s activities or

any of the activities performed by Applicant under the CHANEL

mark.

4

Each of opposer’s pleaded registrations has been renewed and, with the exception of

those registrations issued under the Act of 1905, are registered on the Principal Reg-

ister. With regard to the registrations issued under the Act of 1905, they are entitled

to the benefits of the provisions of the Act of 1946 as though registered on the Princi-

pal Register with the exception of certain limitations set forth in Section 46(b), 15

U.S.C. § 1051 note. See Rolex Watch U.S.A. Inc. v. AFP Imaging Corp., 101 USPQ2d

1188, 1191 n.5 (TTAB 2011), vacated on other grounds, Rolex Watch U.S.A. Inc. v.

AFP Imaging Corp., 107 USPQ2d 1626 (TTAB 2013). See also TMEP § 1601.04 (Oct.

2013).

-4-

Opposition No. 91208352

Otherwise applicant denied the salient allegations therein and asserted vari-

ous affirmative and putative defenses.5

I. The Record; Accelerated Case Resolution

The record includes the pleadings, and pursuant to Trademark Rule

2.122(b), applicant’s application file.

The parties stipulated to resolve this proceeding under the summary

judgment model of the Board’s Accelerated Case Resolution (“ACR”) proce-

dure, and are commended for pursuing this expeditious, cost-efficient alterna-

tive to trial. See “Joint Stipulation of Parties” (TTABVUE Entry #10) (herein-

after referred to as “ACR Stipulation”). See also Trademark Board Manual of

Procedure (“TBMP”) § 528.05(a)(2) (“Accelerated Case Resolution”) and §

702.04(b) (“ACR using Summary Judgment Briefs”). Under the ACR model

selected by the parties, in lieu of separate assigned testimony and briefing pe-

riods, each party submits a summary judgment style brief with evidentiary

submissions attached thereto, effectively merging the trial and briefing peri-

ods into a single phase. See id. In addition, witness testimony is presented in

affidavit or declaration form. Id.

5

Concurrent with his answer, applicant submitted excerpts from various internet

web sites as well as print-outs from the USPTO TSDR database of third-party regis-

trations purporting to show third-party use and registration of the term “Chanel.” In

reaching its decision, the Board has not considered these materials. A federal regis-

tration may not be made of record merely by attachment to a pleading, except that a

plaintiff may make its pleaded registration, showing status and title, of record by at-

tachment to its complaint, pursuant to Trademark Rule 2.122(d). In addition, these

submissions are not deemed to be properly made of record under the procedures set

forth in the parties’ Accelerated Case Resolution (“ACR”) agreement.

-5-

Opposition No. 91208352

Pursuant to their ACR agreement, the parties entered into the following

procedural stipulations approved by the Board:

(1) Neither party shall conduct discovery or rely on expert testi-

mony;

(2) The parties shall forego trial and an oral hearing;

(3) The parties shall submit summary judgment briefs, accompa-

nied by any evidence, which may be submitted in the form of dec-

larations or affidavits;

(4) The page limit for the parties' briefs shall be the page limit

permitted for trial briefs pursuant to Trademark Rule 2.128(b);

(5) The parties are not required to submit separate statements of

material fact as part of their briefs;

(6) Evidence may be marked as “Confidential” or “Attorney's Eyes

Only” pursuant to the Board's protective order automatically ap-

plicable in this proceeding; and

(7) The parties agree that the Board may resolve genuine dis-

putes of material fact and issue a final ruling based on the par-

ties' ACR submissions.

Chanel Inc. v. Makarczyk, 106 USPQ2d 1774, 1775 (TTAB 2013) (ACR stipu-

lation approved by Board).

In addition, per their ACR agreement, the parties stipulated to the fol-

lowing facts:

(1) “Applicant does not claim rights in or use of CHANEL in con-

nection with any goods or services including real estate develop-

ment and construction of commercial, residential and hotel prop-

erty in the U.S. prior to May 15, 2008”;

(2) “Opposer used and registered CHANEL for retail store ser-

vices, clothing, jewelry, fragrances and beauty items prior to May

15, 2008”;

-6-

Opposition No. 91208352

(3) “The opposed mark CHANEL is identical to [o]pposer's trade

name CHANEL”;

(4) “The opposed mark CHANEL is identical to [o]pposer's feder-

ally registered trademark CHANEL”;

(5) “Other than the CHANEL mark opposed herein, [a]pplicant

does not own any other trademark applications or trademark reg-

istrations in the United States that includes [sic] in whole or in

part CHANEL”;

(6) “Applicant uses in connection with his real estate development

and construction of commercial, residential and hotel property

services not only the CHANEL mark but also the marks

HERMES and PLAYBOY among others”;

(7) “Opposer has never given [a]pplicant any consent or permis-

sion or otherwise authorized [a]pplicant to use or register the

CHANEL mark in connection with any goods or services”; and

(8) “There is no connection or affiliation between [o]pposer and ei-

ther [a]pplicant or [a]pplicant's goods or services.”

Id. at 1775-6.

Opposer timely submitted a summary judgment styled ACR brief ac-

companied by the following declarations with exhibits attached thereto: (1)

Veronica L. Hrdy, opposer’s Vice-President/General Counsel; (2) Taryn Loon-

ey, opposer’s Associate Counsel; and (3) Barbara Cirkva, opposer’s Division

President, Fashion, Watches and Fine Jewelry. Portions thereof have been

designated confidential. In addition, opposer properly made of record its

pleaded registrations with its notice of opposition.

Applicant filed neither a brief nor evidence. Nonetheless, as plaintiff in

this proceeding, opposer bears the burden of proving its standing and claims

by a preponderance of the evidence.

-7-

Opposition No. 91208352

II. The Parties

Opposer was founded by fashion designer Gabrielle “Coco” Chanel who

entered the fashion business in 1910 in Paris, France with the opening of a

small millinery shop under the name “Chanel Modes.” Cirkva Declaration, ¶

4. Following the popularity of her custom designed hats, she expanded her

product line to clothing. Id. In 1913, she opened a fashion boutique in Deau-

ville, France and then, in 1915, her first couture house in Biarritz, France. Id.

The following year, Coco Chanel received acclaim from the U.S. press for her

“charming chemise dress.” Id. at ¶ 5. In 1921, she introduced her first per-

fume, CHANEL No. 5, which continues to be one of the best-selling fragrances

on the market today. Id. She began designing and selling costume jewelry in

1924. Id. Later, in 1926, she became known for her design of the “little black

dress.” Following World War II, she reestablished herself as a fashion design-

er with the introduction of the “now-classic” quilted fabric handbag with chain

and leather shoulder strap, marketed under the CHANEL brand name. Id. at

¶¶ 6 and 8. In the 1950s, Stanley Marcus, owner of the U.S. department store

Neiman Marcus, honored Coco Chanel with an award as the most influential

fashion designer of the twentieth century. When Coco Chanel passed away in

1971, all rights in her name and business were assigned to opposer and relat-

ed companies. Id. at ¶ 9. Shortly thereafter, opposer launched a full line of

cosmetics under the name CHANEL BEAUTÉ as well as a retail store collec-

tion of ready-to-wear clothing and accessories under the name CHANEL

-8-

Opposition No. 91208352

BOUTIQUE. Id. Opposer’s clothing product line varies each year, with at

least six different ready-to-wear collections and two haute couture collections

annually. Id. at ¶ 15.

Opposer commenced use of CHANEL in the United States as a trade-

mark and trade name at least as early as the 1930s. Id. at ¶11. Currently op-

poser owns 60 active U.S. registrations consisting of or comprising the term

CHANEL. Hrdy Declaration, ¶ 4, Ex. 63. Opposer markets luxury consumer

products in the United States in various trade channels, including opposer’s

own CHANEL boutiques and third-party retailers such as Saks Fifth Avenue

and Neiman Marcus. Cirkva Declaration at ¶¶ 21-23. The price-point for op-

poser’s goods ranges from nail polish retailing at $27 and sunglasses at $300

to handbags and haute couture clothing items costing thousands of dollars. Id.

Applicant, a citizen of Canada who resides and conducts business in To-

ronto, has applied to register the mark CHANEL for “real estate development

and construction of commercial, residential and hotel property.” Applicant op-

erates several web sites involving the sale or leasing of real property, includ-

ing www.condomonde.com, www.condominiums.com, and

www.hermesrealty.ca. Looney Declaration ¶ 6, Exs. 74 and 81. As a part of

his marketing strategy, applicant promoted on his web site a building with

units apparently named after luxury brands including Chanel, Givenchy, Car-

tier, Versace and Dior. Looney Declaration, ¶ 7. Applicant has also used the

-9-

Opposition No. 91208352

name Hermes and the mark Playboy in connection with his services. Id.; ACR

Stipulation.

III. Standing

Opposer has demonstrated that it is the owner of its pleaded registra-

tions for the mark CHANEL, in both standard character format and stylized

lettering, and that the registrations are valid and subsisting by submitting

with its notice of opposition printouts obtained from the USPTO electronic da-

tabase records showing the current status and title of its pleaded registra-

tions. In view of its ownership of these registrations for the same mark as that

of applicant, opposer has established its standing. See Cunningham v. Laser

Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton In-

dustries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA

1982).

IV. Dilution by Blurring

First, we consider opposer’s claim of dilution by blurring. The Trade-

mark Act provides a cause of action for the dilution of famous marks. See Sec-

tions 13 and 43(c) of the Trademark Act, 15 U.S.C. §§ 1063 and 1125(c). Sec-

tion 43(c) provides as follows:

Subject to the principles of equity, the owner of a famous mark

that is distinctive, inherently or through acquired distinctive-

ness, shall be entitled to an injunction against another person

who, at any time after the owner's mark has become famous,

commences use of a mark or trade name in commerce that is

likely to cause dilution by blurring or dilution by tarnishment of

the famous mark, regardless of the presence or absence of actual

or likely confusion, of competition, or of actual economic injury.

- 10 -

Opposition No. 91208352

Opposer contends that applicant’s applied-for CHANEL mark will dilute the

distinctiveness of opposer’s CHANEL mark. The Trademark Act defines dilu-

tion by blurring as follows:

“[D]ilution by blurring” is association arising from the similarity

between a mark or trade name and a famous mark that impairs

the distinctiveness of the famous mark.

Section 43(c)(2)(B) of the Trademark Act, 15 U.S.C. § 1125(c)(2)(B). “Dilution

diminishes the ‘selling power that a distinctive mark or name with favorable

associations has engendered for a product in the mind of the consuming pub-

lic.’” Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1182 (TTAB 2001) (internal

citation omitted) (“Toro”).

Our primary reviewing court, the Court of Appeals for the Federal Cir-

cuit, has set forth the following four elements a plaintiff must prove in order

to prevail on a claim of dilution by blurring in a Board proceeding:

(1) that plaintiff owns a famous mark that is distinctive;

(2) the defendant is using a mark in commerce that allegedly di-

lutes the plaintiff’s famous mark;

(3) the defendant’s use of its mark began after the plaintiff's

mark became famous; and

(4) the defendant’s use of its mark is likely to cause dilution by

blurring.

- 11 -

Opposition No. 91208352

Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d

1713, 1723-24 (Fed. Cir. 2012) (“Coach Services”).6

A. Whether opposer's CHANEL mark is famous and distinctive

Under §1125(c)(2)(A), a mark is “famous” for dilution purposes —

… if it is widely recognized by the general consuming public of

the United States as a designation of source of the goods or ser-

vices of the mark’s owner. In determining whether a mark pos-

sesses the requisite degree of recognition, the court may consider

all relevant factors, including the following:

(i) The duration, extent, and geographic reach of advertising and

publicity of the mark, whether advertised or publicized by the

owner or third parties.

(ii) The amount, volume, and geographic extent of sales of goods

or services offered under the mark.

(iii) The extent of actual recognition of the mark.

(iv) Whether the mark was registered under the Act of March 3,

1881, or the Act of February 20, 1905, or on the principal regis-

ter.

6

Coach Services involved a use-based application filed pursuant to Section 1(a) of the

Trademark Act. In previous decisions involving intent-to-use applications filed under

Section 1(b), the Board applied the following three-prong test for dilution by blurring

in opposition proceedings:

1. Whether opposer’s mark is famous;

2. Whether opposer’s mark became famous prior to applicant's date of con-

structive use; and

3. Whether applicant’s mark is likely to cause dilution by blurring the distinc-

tiveness of opposer mark.

See e.g., National Pork Board v. Supreme Lobster and Seafood Co., 96 USPQ2d 1479,

1494-5 (TTAB 2010).

- 12 -

Opposition No. 91208352

Opposer has the burden of establishing that its mark has become fa-

mous. “It is well-established that dilution fame is difficult to prove.” Coach

Services, 101 USPQ2d at 1724, quoting Toro, 61 USPQ2d at 1180. As noted in

the statute, fame for dilution requires “widespread recognition by the general

public.” Coach Services, 101 USPQ2d at 1725, citing 15 U.S.C. § 1125(c)(2)(A).

An opposer must show that, when the general public encounters the mark “in

almost any context, it associates the term, at least initially, with the mark's

owner.” Id., quoting Toro, 61 USPQ2d at 1180. A famous mark is one that has

become a “household name.” Coach Services, 101 USPQ2d at 1725 (internal

citations omitted).

In addition, “a mark must be not only famous, but also so distinctive

that the public would associate the term with the owner of the famous mark

even when it encounters the term apart from the owner's goods or services,

i.e., devoid of its trademark context.” Toro, 61 USPQ2d at 1177, citing H.R.

REP. No. 104-374, at 3 (1995) (“the mark signifies something unique, singu-

lar, or particular”). The requirement of “distinctiveness” is derived from Sec-

tion 43(c), which provides that distinctiveness of a famous mark can be shown

- 13 -

Opposition No. 91208352

either through inherent or acquired distinctiveness.7 Fame and distinctive-

ness are “two overlapping, but slightly different, concepts.” Toro, 61 USPQ2d

at 1177. That is to say, “[a] trademark cannot be ‘famous’ unless it is ‘distinc-

tive,’ but it can certainly be ‘distinctive’ without being ‘famous.’ A designation

cannot be a trademark at all unless it is ‘distinctive.’ By definition, all ‘trade-

marks’ are ‘distinctive’—very few are ‘famous.’” 4 J. Thomas McCarthy,

McCarthy on Trademarks and Unfair Competition § 24:104 (4th ed. 2014).

Taking into account the non-exhaustive factors enumerated above as

well as other considerations, we find that opposer has established that its

mark CHANEL is famous for dilution purposes. At the outset we note that

opposer owns numerous registrations for the mark CHANEL on the Principal

Register (or equivalent thereof) which continue to be valid and subsisting, the

first of which was registered in the United States in 1933, over eighty years

ago. The record is devoid of any third-party registrations of similar marks.

According to the record, the CHANEL mark was first used in connec-

tion with fragrances and beauty products in the 1920s. Cirkva Declaration,

7

In 2006, Congress enacted the Trademark Dilution Revision Act (“TDRA”) and

amended Section 43(c) of the Trademark Act of 1946 to overrule the view in some

federal courts that its predecessor, the Federal Trademark Dilution Act (“ FTDA”)

applied only to inherently distinctive marks. See, e.g., Nabisco, Inc. v. PF Brands,

Inc., 191 F.3d 208, 51 USPQ2d 1882, 1887 n.2 (2d Cir. 1999) (“We think the inclusion

of the requirement of distinctiveness was intended, for good reason, to deny the pro-

tection of the statute to non-distinctive marks.”); Savin Corp. v. Savin Group, 391

F.3d 439, 73 USPQ2d 1273 (2d Cir. 2004), cert. denied, 126 S. Ct. 116, 163 L. Ed. 2d

64 (2005) (the surname SAVIN used as a mark is “not as obviously distinctive as, for

example ‘Honda’ or ‘Acura.’ ”).

- 14 -

Opposition No. 91208352

¶12, Exs. 1-2. Opposer further testified that “the CHANEL mark was being

used in connection with clothing and related products” by the late 1950s and

early 1960s, and that “since then, the CHANEL mark continues to be used on

clothing and fashion accessories, including handbags, belts, scarves, shoes,

sunglasses and costume jewelry.” Id.8

For many years, opposer has enjoyed an “extraordinary level of success”

in the United States. Cirkva Declaration, ¶ 16. Opposer’s U.S. revenues from

sales under the CHANEL trademark for over a decade preceding trial are of

record and designated confidential; suffice it to say, the annual figures are ex-

tremely high in terms of both dollar value and units sold. Cirkva Declaration,

¶ 16. Currently, in the United States and its territories, there are twenty-nine

Chanel boutiques bearing the CHANEL brand name on their signage selling a

broad range of fashion products with the CHANEL mark. Cirkva Declaration,

¶ 22. In addition, opposer sells its clothing, footwear, leather goods, watches

and fine jewelry and other fashion-related accessories under the CHANEL

brand through 120 “hand-selected” third-party merchandisers such as Saks

5th Avenue and Neiman Marcus. Id. at ¶ 23. Since 1998, CHANEL branded

fragrance and beauty products have been sold at “thousands” of “authorized

points of sale” in the United States, and opposer’s eyewear products have been

available at large retailers such as Lenscrafters and Sunglass Hut. Id. In

8

Because opposer’s founder Coco Chanel did not keep an archive of opposer’s prod-

ucts “it is difficult to pinpoint exactly when the CHANEL mark was first used in con-

nection with a particular product.” Cirkva Declaration, ¶ 12.

- 15 -

Opposition No. 91208352

2000, opposer began operation of the www.chanel.com web site under the

trade name CHANEL, which was still active at the time of trial. Id. at ¶ 24.

Since 2005, opposer has offered for direct sale to consumers via its web site its

CHANEL branded beauty and fragrance products. The U.S. web site has re-

ceived significant traffic, with 3.5 million visits in 2005, 5.3 million visits in

2006, 6.9 million visits in 2007, 6.8 million visits in 2008, 8.3 million visits in

2009, 13 million visits in 2010, 14.4. million visits in 2011, and 16.1 million

visits in 2012. Id.

Opposer’s advertising and promotional expenditures in connection with

its CHANEL branded products are substantial. From 2000-2007, opposer

spent over $275 million in advertising and promoting its CHANEL mark in

the United States. Id. at ¶ 26. In 2008 alone, opposer’s advertising and promo-

tion expenditures exceeded $50 million. Id. From 2009-2012, opposer spent

over $200 million on advertising and promotion. Id. The largest percentage of

opposer’s advertising budget is devoted to print advertisements that regularly

appear in magazines and newspapers circulated on both a regional and na-

tional level. Id. at ¶ 27. Since 1998, print advertisements promoting the

CHANEL brand have appeared in sixty-six (66) different magazines with a

national circulation, fourteen (14) different regional publications, and ten dif-

ferent trade publications. Id. In addition to magazines devoted to fashion such

as Vogue, Glamour, Harper’s Bazaar and Elle, opposer advertises in men’s

magazines such as GQ, Men’s Journal and Golf Digest as well as general in-

- 16 -

Opposition No. 91208352

terest magazines such as People, Vanity Fair and The New Yorker and news-

papers with a large, general circulation such as The New York Times. Id. Op-

poser also advertises in trade publications such as Beauty Biz and Beauty

Fashion. Thus, the record supports a finding that opposer’s print advertising

campaign reaches both genders at various income levels.

In addition to print media, opposer advertises its CHANEL mark prom-

inently in cable and network television as well as outdoor media such as bill-

boards and bus shelters. Id. at ¶ 28. More recently, opposer has significantly

expanded consumer exposure to its CHANEL brand name by launching an ex-

tensive advertising campaign using social media such as Facebook, YouTube,

Twitter, Google+, Vimeo and Linkedin. Id. at ¶ 29. Opposer’s Facebook page

has attracted 9.5 million fans since its inception in 2009. Id. In August 2010,

opposer introduced a YouTube page which has gained over 100,000 subscrib-

ers and almost 40 million views. Id. Opposer’s Twitter page, launched in 2011,

has over 2 million followers. Id. Opposer’s Google+ page created in 2012 has

over 900,000 “+1’s” and over 600,000 users’ “circles.” Also in 2012, opposer be-

gan using LinkedIn as a social media vehicle to advertise its CHANEL brand-

ed products which has garnered the attention of over 80,000 followers. Id. Op-

poser’s Vimeo page launched in 2013 has drawn over 185,000 views. Id. As

further testament to CHANEL’s widespread recognition, despite opposer’s

lack of an official Pinterest account, CHANEL was ranked as the number one

- 17 -

Opposition No. 91208352

shared fashion brand, with 150,000 shares, 58 million total impressions, and

an average of 56 “pins” per day and 1244 “re-pins” daily. Id. at ¶ 38.

The substantial amount of advertising by third-parties also increases

consumer exposure to opposer’s mark. Third-parties authorized to sell oppos-

er’s CHANEL products online (such as Macy’s and Nordstrom via macys.com,

and Nordstrom.com, respectively) advertise opposer’s CHANEL branded

products via direct mailings, catalogs, and point of purchase displays. Id. at ¶

31, Ex. 9. From 2000-2007, such third-party advertising collectively amounted

to $29 million; between 2008 and 2012, the figure was $ 33 million. Id.

Generations of prominent celebrities have either endorsed or appeared

in advertisements for CHANEL-branded merchandise, including Catherine

Deneuve, Marilyn Monroe, Nicole Kidman, Keira Knightley, Christy Turling-

ton, Kate Moss and Brad Pitt. Id. at ¶ 30, Exs. 7 and 8. In addition to these

formal celebrity endorsements and paid advertisements, prominent celebrities

and fashion icons such as Beyoncé, Penelope Cruz, and Sarah Jessica Parker

are frequently photographed either carrying CHANEL-branded handbags or

wearing CHANEL fashions. Id. at ¶ 32. Such photographs frequently appear

in publications in which opposer does not advertise (for example, in tabloid

magazines), thereby broadening the exposure of opposer’s CHANEL mark. Id.

- 18 -

Opposition No. 91208352

Opposer also garnered unsolicited publicity in newspaper and magazine arti-

cles. Id. at 34. We note the following representative examples:9

“Only the best for your plastic. Your credit cards work hard for

you. The least they deserve is to rest in the pinnacle of luxury

that is Chanel.” The Atlanta Journal Constitution (November

27, 2005) (Cirkva Declaration Ex. 16);

“Chanel, the brand famous for high-end accessories with chain

straps and camellias…” Los Angeles Times (March 9, 2008)

(Cirkva Declaration Ex. 23);

“Take that most famous of quilted fashion items, the gold-

chained Chanel handbag.” W Vol. 36, Issue No. 9 (September 1,

2007) (Cirkva Declaration Ex. 18).

In addition, CHANEL branded products are frequently the subject of

fashion and beauty articles and product reviews. Cirkva Declaration, ¶ 33,

Exs. 12 and 13. For example, when opposer recently reintroduced its original-

ly styled watch, it garnered considerable media attention. See for example

“Chanel Introduces Its Premier Watch,” Elle.com; “What I Covet: Chanel’s

Premiere Watch,” Time April 29, 2013 (Mikva Declaration, Ex. 13).

Opposer’s CHANEL mark has been consistently ranked as one of the

most recognized and famous brands in the United States. In 2012, Women’s

Wear Daily ranked Chanel as the eighth most recognized designer brand and

also ranked it in the top ten beauty brands. Mikva Declaration ¶ 36, Exs. 32-

33. As measured by Facebook “likes,” Chanel was ranked fifth amongst fash-

ion brands. Id. at Ex. 34. The CHANEL brand has appeared in the top 100 in-

9

Articles submitted by opposer from foreign publications (e.g. The Economist) have

not been considered insofar as opposer did not provide evidence of U.S. circulation.

- 19 -

Opposition No. 91208352

ternational brands as ranked by Interbrand and reported in BusinessWeek

each year between 2001 and 2009. Id. at Ex. 35. In 2010-12, Millward Brown

ranked the CHANEL brand in the top five luxury brands worldwide based on

brand value. Id. at Ex. 36. In 2010 and 2012, Fashionista.com ranked Chanel

number four for luxury brands. Id. at Ex. 38. Luxury Daily.com reported

CHANEL as among the ten most searched handbag brands on the internet in

2012. Id. at Ex. 40.

Opposer’s products sold under the CHANEL mark have received nu-

merous industry-specific awards. For instance, opposer’s CHANEL perfumes

and fragrances (and in particular CHANEL No. 5) have received numerous

“FiFi” awards from The Fragrance Foundation, which are considered the “Os-

cars” of the fragrance industry, including awards for best media campaign

(2003, 2010, 2013), best commercial (2008) and best women’s and men’s pres-

tige fragrance (2002 and 2003, 1999 and 2011 respectively). Id. at ¶ 41, Ex.

52. In 2012, the Jewelry Information Center awarded opposer a GEM award

for raising the visibility and status of fine jewelry and watches. Id. at Ex. 54.

The CHANEL brand name and its founder, Coco Chanel, have been the

subject of numerous fiction and non-fiction books. Id. at ¶ 42, Ex. 55. In 2005,

the Metropolitan Museum of Art in New York City staged an exhibit devoted

exclusively to the fashions of Chanel with celebrities Nicole Kidman, Jennifer

Connelly and the Olsen twins recounting the history of Chanel through the

ensembles they wore. Id. at ¶ 43, Ex. 56. Opposer celebrated the seventieth

- 20 -

Opposition No. 91208352

anniversary of its fine jewelry debut with an exhibit adjacent to the Museum

of Modern Art in New York, which was widely reported in the New York

Times, Wall Street Journal, Time, Vogue and Elle. Id. at Ex. 46. Opposer “con-

stantly” receives requests for permission from third-parties to allow references

to CHANEL branded products in films, television programs, books and adver-

tisements. Id. at ¶ 44. Opposer stated that because it is “very protective of the

Chanel mark since it is one of [our] most important assets, Chanel normally

declines such requests.” Id. Nonetheless, opposer does occasionally grant per-

mission to certain media vehicles reaching a wide demographic audience.

Clothing and accessories bearing the CHANEL mark have appeared in movies

and television shows reaching a wide range of audiences such as The Simp-

sons (1996), West Wing (2000), Austin Powers 3 (2002), Elf (2003), Spiderman

3 (2005), The Devil Wears Prada (2006), and Sex in the City (television 1998

and 2004; movie 2008). Id.

The consumer recognition survey evidence introduced by opposer is also

particularly persuasive. Over the past six years, for internal business purpos-

es, opposer has commissioned multiple consumer surveys demonstrating that

its mark CHANEL is extremely well known and enjoys an unusually high de-

gree of unaided and aided10 recognition.11 The fact that these surveys were

10

“Unaided” awareness indicates that the survey participant spontaneously mentions

the CHANEL brand name without prompting; “aided” awareness means that the

survey participant responds “yes” when asked whether he or she is aware of the

CHANEL brand name. Cirkva Declaration ¶ 45.

- 21 -

Opposition No. 91208352

commissioned prior to the instant litigation and were used in the ordinary

course of business increases their probative value.

Opposer’s consistent history of U.S. advertising on multiple platforms

such as print and social media, its extremely high sales figures and its high

degree of unsolicited media attention and unaided consumer recognition, sup-

port the finding that CHANEL enjoys widespread recognition among the gen-

eral public and is a “household name” synonymous with high fashion and style

for the products and services identified in its pleaded registrations, and is

therefore famous for dilution purposes. See Coach Services, 100 USPQ2d at

1725. See also Thane International, Inc. v. Trek Bicycle Corp., 305 F.3d 894,

64 USPQ2d 1564, 1575 (9th Cir. 2002) (the transformation of a term into a

truly famous mark means that “the mark must be a household name.”).

We further find that in addition to being famous for dilution purposes,

opposer’s CHANEL mark is distinctive as well.

The record shows that opposer’s CHANEL mark is derived from the

surname of its founder Coco Chanel, and that some, but not all, of opposer’s

marks are registered under Section 2(f). Even assuming that applicant’s mark

is not inherently distinctive, the record evidence discussed above more than

sufficiently demonstrates that opposer’s mark has acquired distinctiveness,

and is therefore “distinctive” within the meaning of Section 43(c) of the Act.

11

Opposer designated this evidence and supporting statements as confidential.

- 22 -

Opposition No. 91208352

B. Whether applicant is using a mark in commerce that al-

legedly dilutes opposer’s famous mark

Opposer, as plaintiff in this proceeding, must also prove that applicant

is using a mark in commerce that allegedly dilutes opposer’s famous mark.

Coach Services Inc. v. Triumph Learning LLC, 101 USPQ2d at 1723-24. This

prong of the dilution analysis is derived from the statutory language requiring

that the defendant has commenced use of a mark in commerce. 15 U.S.C.

§1125(c)(1). Before considering whether opposer has satisfied the second

prong as set forth in Coach Services, supra, we shall briefly examine the his-

tory of dilution claims before the Board.

Prior to 1995, the Board did not recognize dilution as a viable claim in

either opposition or cancellation proceedings. See e.g., Geo. A. Dickel Co. v.

General Mills, Inc., 317 F.2d 954, 137 USPQ 891, 892 (CCPA 1963); K2 Corp.

v. Philip Morris Inc., 192 USPQ 174, 177 (TTAB 1976), aff'd, 555 F.2d 815,

194 USPQ 81 (CCPA 1977); Max Factor & Co. v. Clairol Inc., 163 USPQ 240,

243 (TTAB 1969). In 1995, Congress passed the Federal Trademark Dilution

Act of 1995 (“FTDA”), 15 U.S.C. §§ 1125(c), 1127, which created a federal

cause of action for trademark dilution. While the FTDA amended Section 43 of

the Trademark Act to provide for federal claims of dilution, it did not add di-

lution as a ground for either opposition to an application or cancellation of a

registration before the Trademark Trial and Appeal Board. Thus, when the

issue of applicability of federal dilution claims under the FTDA to Board pro-

ceedings was considered a year later in the case of Babson Bros. Co. v. Surge

- 23 -

Opposition No. 91208352

Power Corp., 39 USPQ2d 1953 (TTAB 1996), the Board held that while the

FTDA provided “a federal cause of action in courts,” it did not explicitly or im-

plicitly provide a new ground for opposition or cancellation in Board inter

partes proceedings. Babson Bros., 39 USPQ2d at 1954-55. Congress subse-

quently amended Sections 13 and 14 of the Trademark Act to explicitly state

that dilution is an available ground in opposition or cancellation proceedings

before the Board. Trademark Amendments Act of 1999 (“TAA”), Pub. L. No.

106-43, 113 Stat. 218. See Cong. Rec. June 22, 1999, S7453-54 (1999) (state-

ment of Sen. Hatch referring specifically to the Board’s decision in Babson,

supra.). The new legislation was intended to “provide holders of famous marks

with a right to oppose or seek cancellation of a mark that would cause dilution

as provided in the [Federal Trademark] Dilution Act.” H.R. Rep. No. 106-250,

at 5 (1999). The pertinent language for opposition proceedings now reads as

follows: “[a]ny person who believes that he would be damaged by the registra-

tion of a mark upon the principal register, including as a result of dilution

under section 1125(c) of this title, may … file an opposition in the Patent and

Trademark Office.” 15 U.S.C. §1063(a) (2000) (emphasis added).

In Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001), the Board

was confronted with the issue of whether a dilution claim can be entertained

in an opposition proceeding against an application based on Section 1(b) of the

Act (intent-to-use). The Board examined the legislative history of the TAA,

and answered this question in the affirmative, reasoning:

- 24 -

Opposition No. 91208352

Such applications are often published for opposition prior to the

applicant's using the mark in commerce. Thus, many opposition

proceedings involve marks that are not actually used. If marks

based on an intent to use could not be opposed on the ground of

dilution, the intent of Congress to provide for the “[r]esolution of

the dilution issue before the Board, as opposed to the Federal

District Court, [and thereby] result in more timely, economical,

and expeditious decisions” would be frustrated. H.R. REP. No.

106-250, at 5 (1999). To require actual use by the applicant be-

fore a dilution claim could be recognized at the Board would,

practically speaking, result in most dilution claims being

brought as cancellation proceedings or in district court. Since the

Board cannot issue injunctions, once a party has begun using the

mark in commerce, it is much more likely that the focus will shift

to the Federal courts. This would defeat the articulated purpose

of the TAA. Therefore, we hold that an application based on an

intent to use the mark in commerce satisfies the commerce re-

quirement of the FTDA for proceedings before the Board.

Id. at 1174 (emphasis added).

Subsequent to Toro, Congress enacted the Trademark Dilution Revi-

sion Act of 2006 (“TDRA”) which supersedes the FTDA and amends Section

43(c), 15 U.S.C. § 1125(c).12 While the TDRA removed the requirement of

12

Some of the key provisions of the TDRA include reversing the Supreme Court’s rul-

ing in Moseley v. Secret Catalogue, Inc., 537 U.S. 418 (2003) which required proof of

“actual dilution” instead of a “likelihood” of dilution and clarifying that the owner of a

mark must demonstrate fame among “the general consuming public of the United

States,” as opposed to fame in a niche market. In addition, Section 43 was amended

to expand the federal registration defense to include all types of dilution claims un-

der state law by replacing the FTDA’s language barring only claims for “dilution of

the distinctiveness of a mark” with language barring claims for “dilution by blurring

or dilution by tarnishment.” H.R. 683, 109th Cong. 1st. Sess., 6 (Feb. 9, 2005). In

Academy of Motion Picture Arts and Sciences v. Alliance of Professionals and Con-

sultants Inc., 104 USPQ2d 1234 (TTAB 2012), the Board interpreted the federal reg-

istration defense of the TDRA, as originally promulgated, as bar to all claims of dilu-

tion in cancellation proceedings before the Board(respondent’s motion to dismiss peti-

tioner’s dilution claim granted; under the TDRA, ownership of a federal registration

acts as a complete bar to assertion of a dilution claim before the Board). In October

2012, the TDRA was amended to clarify that the federal registration defense applies

only to dilution claims under state law. Thus, Academy of Motion Picture Arts and

- 25 -

Opposition No. 91208352

“commercial” use in commerce, it left open the question of what constitutes

use in commerce.

Keeping in mind that the purpose of an opposition proceeding is to de-

termine an applicant’s right to a federal registration, we hold that an opposer

asserting a dilution claim in a Board proceeding against an application based

on an allegation of actual use in commerce pursuant to Section 1(a) may prove

applicant’s use in commerce by direct evidence or may rely on the application

filing date as the date of constructive use.13 See Coach Services, 101 USPQ at

1725, citing Toro, 61 USPQ2d at 1174 (the owner of a famous mark must

demonstrate that its mark became famous “prior to the filing date of the

trademark application or registration against which it intends to file an oppo-

sition or cancellation proceeding”). We believe this interpretation of the re-

quirement of use in commerce embodied in the statute to be consistent with

the stated purpose of the TAA which was to permit parties to bring dilution

claims in Board proceedings “before dilution type damage has been suffered in

Sciences v. Alliance of Professionals and Consultants Inc., has been superseded by

the amendment of the TDRA.

13

The constructive use provisions set forth in Section 7(c) of the Trademark Act pro-

vide that “[c]ontingent on the registration of a mark on the principal register provid-

ed by this Act, the filing of the application to register shall constitute constructive

use of the mark, conferring a right of priority, nationwide in effect … against any

other person except for a person … who, prior to such filing (1) has used the

mark…”15 U.S.C. §1057(c). In adopting the principle of constructive use in connec-

tion with the advent of intent-to-use applications, Congress intended to eliminate

both the business uncertainty for applicants seeking to introduce new brand product

names into the marketplace as well as the legal fiction of token use. S. Rep. No. 101-

515, 100th Cong., 2d Sess. (1988).

- 26 -

Opposition No. 91208352

the marketplace by the owner of a famous mark.” H.R. Rep. No. 106-250, at 5

- 6 (1999). Otherwise, “[i]f we interpreted the TAA in a wooden manner, most

owners of famous marks would not be able [sic] bring dilution claims at the

Board against an application based on an intent to use or even limited actual

use. Such an interpretation would render the TAA virtually meaningless.” To-

ro, 61 USPQ2d at n.7 (internal citation omitted).

In the present case, opposer did not directly address this element in its

ACR brief. Rather, opposer in its introductory remarks points to the parties’

ACR stipulation regarding applicant’s concession that he did not make use in

the United States of his CHANEL mark prior to the date of first use alleged in

his application. ACR Stipulation ¶ 3. Opposer further argues that applicant’s

specimen of use does not show use in the United States and that opposer can-

not locate any use. Opposer’s ACR Brief, p. 19. Nonetheless, as noted above,

opposer is entitled to rely on applicant’s filing date as applicant’s date of con-

structive use. Opposer has therefore satisfied this second prong.

C. Whether opposer’s CHANEL mark became famous prior to

applicant's use

The third prong requires the owner of a famous mark to demonstrate

that its mark became famous prior to applicant’s established use or filing

date. 15 U.S.C. § 1125(c). In this case, because we have no evidence of appli-

cant’s use we must determine if opposer’s mark became famous “prior to the

filing date of the trademark application or registration against which it in-

tends to file an opposition or cancellation proceeding.” Coach Services, 101

- 27 -

Opposition No. 91208352

USPQ2d at 1725, citing Toro, 61 USPQ2d at 1174.14 The vast majority of the

evidence in the record about the fame of opposer’s CHANEL trademark pre-

dates the April 17, 2012 filing date of applicant’s application. Therefore, we

find that the fame of the CHANEL mark was well-established prior to appli-

cant’s filing date i.e. applicant’s constructive use date.

D. Whether applicant’s CHANEL mark is likely to cause dilu-

tion by blurring the distinctiveness of opposer’s CHANEL

mark.

Dilution by blurring is an “association arising from the similarity be-

tween a mark or trade name and a famous mark that impairs the distinctive-

ness of the famous mark,” 15 U.S.C. § 1125(c)(2)(B), and may be found “re-

gardless of the presence or absence of actual or likely confusion, of competi-

tion, or of actual economic injury,” 15 U.S.C. § 1125(c)(1). Dilution by blurring

occurs when a substantial percentage of consumers, upon seeing the junior

party’s use of a mark on its goods or services, are immediately reminded of the

famous mark and associate the junior party’s use with the owner of the fa-

mous mark, even if they do not believe, for example, that the goods or services

come from the famous mark's owner, or that the famous mark’s owner ap-

proves the goods or services. See e.g., Nike Inc. v. Maher, 100 USPQ2d 1018

(TTAB 2011); National Pork Board v. Supreme Lobster and Seafood Co., 96

14

Applicant did not attempt to show it made actual use of its applied-for CHANEL

mark in commerce prior to the date opposer’s CHANEL mark attained fame for dilu-

tion purposes. Cf. Citigroup Inc. v. Capital City Bank Group Inc., 94 USPQ2d 1645,

1650, n.13 (TTAB 2010), aff’d Citigroup Inc. v. Capital City Bank Group Inc., 98

USPQ2d 1253 (Fed. Cir. 2011) (intent-to-use applicant asserting any use prior to its

filing date is required to plead such use as an affirmative defense to dilution claim).

- 28 -

Opposition No. 91208352

USPQ2d 1479 (TTAB 2010). In addition, we must determine not only whether

there is an ‘association’ arising from the similarity of the marks, but whether

such association is likely to ‘impair’ the distinctiveness of the famous mark.

Nike Inc. v. Maher, 100 USPQ2d 1018, 1023 (TTAB 2011) (“Nike v. Maher”).

In determining whether a mark or trade name is likely to cause dilution by

blurring, the Board may consider the following six non-exhaustive factors:

(i) The degree of similarity between the mark or trade name

and the famous mark.

(ii) The degree of inherent or acquired distinctiveness of the

famous mark.

(iii) The extent to which the owner of the famous mark is en-

gaging in substantially exclusive use of the mark.

(iv) The degree of recognition of the famous mark.

(v) Whether the user of the mark or trade name intended to

create an association with the famous mark.

(vi) Any actual association between the mark or trade name

and the famous mark.

15 U.S.C. § 1125(c)(2)(B)(i)-(vi).

1. The degree of similarity between the mark or trade

name and the famous mark

In this case, there is no dispute that the marks in question are identi-

cal. Indeed, applicant admitted in his answer and also stipulated that his ap-

plied-for mark CHANEL is identical to opposer’s mark and trade name

CHANEL. See ACR Agreement, “Stipulation of Fact” ¶ 4. This factor therefore

favors finding a likelihood of dilution by blurring.

- 29 -

Opposition No. 91208352

2. The degree of inherent or acquired distinctiveness of

the famous mark

“This factor requires us to analyze how distinctive or ‘unique’ the mark

is to the public. The inquiry is made even when it is undisputed that opposer's

mark is registered on the Principal Register.” NASDAQ Stock Market Inc. v.

Antartica S.r.l., 69 USPQ2d 1718, 1735 (TTAB 2003). “The more inherently

distinctive and memorable the mark, the more it is likely to be blurred by the

use of other identical or similar marks. The more descriptive the mark, the

less likely it is to be blurred by uses of identical or similar marks.” Testimony

of Anne Gundelfinger, President, International Trademark Association, before

House Subcommittee on Courts, the Internet and Intellectual Property,

Committee on the Judiciary, February 17, 2005 (109th Cong., 1st Sess.), 2005

WL 408425.

As noted above, opposer’s mark CHANEL was originally derived from

the designer Coco Chanel’s surname. The origin of opposer’s brand name,

however, does not diminish its distinctiveness. Indeed, opposer has submitted

voluminous evidence that the media uses the term CHANEL to refer solely to

opposer. In any event, the discussion above regarding opposer’s extensive evi-

dence of fame of the CHANEL mark used in connection with clothing, fashion

accessories, beauty products and boutiques more than sufficiently establishes

that opposer’s CHANEL mark has acquired a high degree of distinctiveness

among consumers. This factor therefore also favors a finding of likelihood of

dilution.

- 30 -

Opposition No. 91208352

3. The extent to which the owner of the famous mark is

engaging in substantially exclusive use of the mark

The record reflects that opposer has indeed engaged in “substantially ex-

clusive” use of its CHANEL mark. Opposer stated that due to the fame and

value of its CHANEL mark, it vigorously enforces its exclusive use and only

permits one other unrelated third-party, Luxottica S.r.L., licensed permission

to use the CHANEL mark in connection with eyewear products. Hrdy Decla-

ration, ¶¶ 5 and 6; Cirkva Declaration, ¶ 25. The Luxottica license agreement

contains “strict quality standards to ensure that products bearing the

CHANEL mark meet the same standards for which Chanel has long been

known.” Id.

In addition, opposer stated that it expends a “great deal of resources po-

licing the CHANEL mark,” employing a trademark watch service to monitor

third-party use. Hrdy Declaration ¶ 6. This statement is corroborated by the

record evidence showing that from 1998 to the present, opposer has filed over

one hundred (100) trademark infringement lawsuits and sent over one-

thousand (1,000) cease and desist letters, leading the New York Times in 2007

to identify opposer as one of the top ten filers of trademark suits. Id. at ¶¶ 7

and 10. This includes eight opposition proceedings before the Board, and sev-

enteen successful domain name disputes before WIPO. Id. at ¶¶ 10-11. The

record further shows no other unconsented uses of the mark CHANEL by

third parties. Accordingly, on this record, we find that opposer has made sub-

- 31 -

Opposition No. 91208352

stantially exclusive use of the CHANEL trademark, and therefore, this dilu-

tion factor favors opposer.

4. The degree of recognition of the famous mark

The discussion of fame above shows that opposer’s CHANEL mark en-

joys a high degree of recognition among consumers. In particular we note the

following: opposer’s surveys conducted in the ordinary course of business

showing a high degree of unaided consumer recognition; third-party consumer

recognition surveys in both print and social media form (e.g. Women’s Wear

Daily, Businessweek, Facebook); the extensive level of unsolicited third-party

media coverage; and the number of prestigious industry awards. Such evi-

dence demonstrates that CHANEL is widely recognized by the general con-

suming public as a mark identifying opposer’s particular style of clothing,

fashion accessories, fragrances, beauty products and retail services. This high

degree of consumer recognition favors opposer.

5. Whether the user of the mark or trade name intended to

create an association with the famous mark

Opposer has presented evidence demonstrating that applicant intended

to create an association with opposer's famous CHANEL mark, despite the

fact that opposer never licensed applicant to use the mark (either orally or in

writing) and has never even conducted any business with applicant. ACR

Agreement “Stipulation of Facts” ¶ 7 and 8; Answer ¶ 2.17; Looney Declara-

tion, ¶¶ 4 and 7. According to publicly available evidence opposer obtained

from applicant’s websites, www.condomonde.com and

- 32 -

Opposition No. 91208352

www.condominiums.com, applicant markets luxury rental properties by nam-

ing units after luxury brands such as Chanel, Dior, Givenchy, and Versace.

Looney Declaration, ¶ 7, Exs. 77 and 79. Applicant stated on his web site that

opposer Chanel is among his former or current clients, referring to the Chanel

boutiques as “the world’s finest” along with other fashion houses such as Lou-

is Vuitton, Prada and Gucci. Looney Declaration, ¶ 7, Exs. 77 and 79. Indeed,

applicant, in promoting his services on his web site, has referred to the elevat-

ed status he purportedly enjoys from his relationship with Chanel. Id. at Ex.

78. Opposer’s corporate counsel testified however that opposer “has not done

business with the applicant, nor have we licensed the CHANEL mark to him.”

Id. at ¶ 7.

We therefore find that applicant is attempting to trade on the goodwill

and fame generated by the CHANEL mark in order to promote and market

his own services. As such, this dilution factor also favors opposer.

6. Any actual association between the mark or trade name

and the famous mark

Insofar as opposer presented no evidence regarding this factor, it is

deemed neutral.

In summary, each factor, with the exception of the sixth factor dis-

cussed above which was deemed neutral, favors a finding of likelihood of dilu-

tion.

7. Impairment

The statute requires opposer to prove impairment of the distinctiveness

- 33 -

Opposition No. 91208352

of opposer's famous mark. See Nike Inc. v. Maher, 100 USPQ2d at 1023. See

also Louis Vuitton Malletier S.A. v. Haute Diggity Dog LLC, 507 F.3d 252, 84

USPQ2d 1969 (4th Cir. 2007). Opposer stated that if applicant were to obtain a

registration, “his use of our very mark will devalue the CHANEL brand and

cause significant harm to Chanel by diluting the distinctiveness of Chanel’s

famous mark.” Cirkva Declaration, ¶ 51. We note that although opposer has

no current involvement in the real estate or hotel industry, the record shows

that many luxury brand companies have licensed use of their marks in con-

nection with hotels. Looney Declaration ¶ 10, Ex. 82. In other words, they

have found opportunities to commercially exploit the distinctiveness of their

marks in those industries. In addition, many other well-known luxury brands

have either expanded into or licensed use of their brand names in fields out-

side of the fashion industry that are related to real estate. For example, Ver-

sace now offers interior design services, Fendi provides kitchen design ser-

vices and Jason Wu markets designer-styled bathroom fixtures. Id. ¶ 11, Exs.

84-98. We find these statements and surrounding circumstances of the indus-

try sufficient to show that opposer is likely to suffer an impairment of the dis-

tinctiveness of its CHANEL mark.

In summary, we find that based on the record before us, opposer has

demonstrated that applicant's CHANEL mark is likely to cause dilution by

blurring of its CHANEL trademarks and service marks.

- 34 -

Opposition No. 91208352

Decision: The opposition is sustained on opposer’s claim of dilution by

blurring. Insofar as we are sustaining the opposition on this ground, we need

not consider opposer’s remaining claims under Sections 2(a) and 2(d) of the

Trademark Act.

- 35 -