A trademark registration may be denied for being likely to cause dilution of a famous mark. Trademark Act Section 43(c)(2)(B) defines dilution by blurring as an “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.”15 U.S.C. § 1125(c)(2)(B).
For the purpose of dilution, “a mark is famous if it is ‘widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner.'” Coach Servs v. Triumph Learning LLC, 668 F.3d 1356, 1372 (Fed. Cir. 2012) (quoting 15 U.S.C. § 1125(c)(2)(A)). “To establish the requisite level of fame, the mark's owner must demonstrate that the common or proper noun uses of the term and third-party uses of the mark are now eclipsed by the owner's use of the mark. 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. In other words, a famous mark is one that has become a household name.” Id. at 1373 (internal citation omitted). “To be vulnerable to dilution, 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 Co. v. ToroHead, Inc., Opp. No. 114061, 2001 TTAB LEXIS 823, *40 (TTAB 2001) (finding no dilution because Toro's mark had not become famous and distinctive outside of its specific trading fields).
Dilution by blurring occurs:
[W]hen a substantial percentage of consumers, on seeing the junior party's mark on its goods, are immediately reminded of the famous mark and associate the junior party's mark with the owner of the famous mark, even if they do not believe that the goods emanate from the famous mark's owner. The concern is that the gradual whittling away of distinctiveness will cause the trademark holder to suffer death by a thousand cuts. Blurring may occur regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.
Advance Magazine Publrs., 2023 TTAB LEXIS 223, *47-48 (internal citation omitted).
The statutory dilution by blurring factors are:
- the degree of similarity between the mark or trade name and the famous mark;
- the degree of inherent or acquired distinctiveness of the famous mark;
- the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark;
- the degree of recognition of the famous mark;
- whether the user of the mark or trade name intended to create an association with the famous mark; and
- any actual association between the mark or trade name and the famous mark.
15 U.S.C. § 1125(c)(2)(B)(i-vi).
The TTAB sustained an opposition to the registration of the mark GIGI DIOR for “Entertainment services, namely, personal appearances by a porn star; Entertainment services, namely, providing a web site featuring non-downloadable adult-themed photographs and videos," on the ground of dilution by blurring the famous mark DIOR for clothing, jewelry and bags. Christian Dior Couture, S.A. v. Gramkey Investments, Modeling and Consulting, Opp. No. 91281244 (TTAB Jan. 31, 2025). Here, the name GIGI DIOR shown in the mark identifies adult entertainment actress Stephanie Hodge, President and sole owner of Applicant Gramkey Investments.
To establish dilution, the Opposer was required to show that:
- Oppose owns a famous mark that is distinctive;
- Applicant is using a mark in commerce that allegedly dilutes Opposer's famous mark;
- Applicant's use of its mark began after Opposer's became famous; and
- Applicant's use of its mark is likely to cause dilution by blurring or tarnishment.
See Coach Servs., 668 F.3d at 1372.
In determining whether a mark possesses the requisite degree of recognition to be famous, relevant factors include:
- The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.
- The amount, volume, and geographic extent of sales of goods or services offered under the mark.
- The extent of actual recognition of the mark.
- Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
Establishing actual recognition of a famous mark does not require a survey, and instead may be shown by third-party valuations of the strength of a mark. See Coach Servs., 668 F3d at 1374 (“The name [COACH] also resonates with consumers. The brand ranked eighth among the top 10 in accessories firms in the latest Fairchild 100 consumer survey of fashion labels, in 1995.”); Spotify AB v. U.S. Software Inc., 2022 TTAB LEXIS 2, *28 (“Opposer's SPOTIFY brand is so strong that it has been ranked among the ‘best' or most ‘relevant' in the United States and beyond.”); see also Chanel, Inc. v. Makarczyk, 2014 TTAB LEXIS 217, *26 (“Opposer's CHANEL mark has been consistently ranked as one of the most recognized and famous brands in the United States.”); Research in Motion Ltd. v. Defining Presence Mktg. Group, Inc., 2012 TTAB LEXIS 45, *17 (“Over the past decade, BLACKBERRY has repeatedly been ranked among the most famous and valuable trademarks in the world by industry publications that track the powerful reach of global brands.”).
Here, the Opposer submitted the Apparel 50 2022 Annual Report of Brand Finance, which stated: "Dior is named the strongest apparel brand in the ranking with AAA brand rating." The Opposer also submitted testimony by its CFO that that it was founded in France in 1946 by fashion designer Christian Dior, launched its first fashion collection in 1947, and has become one of the world's leading fashion houses and luxury brands.
The TTAB also noted that "DIOR goods do not have to be purchased by the general public for the DIOR mark to be recognized by the general public."
In sum, Opposer owns multiple DIOR federal registrations, some issued decades ago; has demonstrated decades of consistently large numbers of DIOR goods sold each year and high revenues based on those sales; has documented decades of promotional efforts through multiple outlets and featuring celebrities and high profile events; has been the subject of third party articles on its promotional relationships with celebrities; and was recently recognized for its brand strength by a third-party brand valuation study. We find the record shows that DIOR is a household name, and for the purposes of dilution, a famous mark.
The TTAB found that the applied-for GIGI DIOR mark is sufficiently similar to Opposer's famous DIOR mark as to "trigger consumers to conjure up' Opposer's [DIOR] mark." Nike Inc. v. Maher, 2011 TTAB LEXIS 234, *42 (TTAB 2011). The addition of the prefatory term GIGI did not change the connotation of DIOR or the strong similarity created by adopting Opposer's famous DIOR mark "in its entirety." The TTAB also found that there was no actual association between Applicant's use of her GIGI DIOR mark and Opposer's DIOR mark, noting that Opposer has no sponsorship agreements or endorsement deals with any pornographic performer, and no actual knowledge of the use of DIOR by pornographic performers, and no plans for expansion of its use of the DIOR Marks into personal appearances by a porn star or into providing a web site featuring non-downloadable adult-themed photographs and videos.
There is no question that DIOR is a famous mark, that DIOR goods are widely used and recognized by a large percentage of the United States population, and that Opposer's DIOR mark is distinctive. This was the case prior to Applicant's proven date of first use of its mark. This impairs the distinctiveness of Opposer's previously registered mark. In view thereof, we find dilution by blurring.
Accordingly, the TTAB sustained the opposition on the ground of dilution by blurring.
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