In a precedential decision, the Trademark Trial and Appeal Board (TTAB or Board) sustained the opposition filed by Chanel, Inc. that challenged the use-based application of Jerzy Makarczyk to register the mark CHANEL for “real estate development and construction of commercial, residential and hotel property” on the ground that the mark diluted by blurring the opposer’s famous CHANEL mark. Chanel, Inc. v. Jerzy Makarczyk
, Opposition No. 91208352 (T.T.A.B. May 27, 2014).
As part of a marketing strategy, Makarczyk promoted a building with units named after luxury brands, including CHANEL, GIVENCHY, CARTIER, VERSACE and DIOR. Chanel opposed Makarczyk’s application on several grounds, including a likelihood of dilution by blurring under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).
Dilution 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. The TTAB identified four elements a plaintiff must prove in order to prevail in a claim of dilution by blurring:
The plaintiff owns a famous mark that is distinctive;
The defendant is using in commerce a mark that allegedly dilutes the plaintiff’s famous mark;
The defendant’s use of its mark began after the plaintiff’s mark became famous; and
The defendant’s use of its mark is likely to cause dilution by blurring.
The TTAB had little difficulty in finding that Chanel had successfully proved the first three elements. It then turned its attention to whether Makarczyk’s mark was likely to cause dilution by blurring. In doing so, the Board considered six non-exhaustive factors:
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 use of the mark or trade name was intended to create an association with the famous mark; and
Any actual association between the mark or trade name and the famous mark.
The TTAB found that (1) the marks in question were identical; (2) the opposer’s CHANEL mark had acquired a high degree of distinctiveness; (3) the opposer had engaged in substantially exclusive use of its CHANEL mark; (4) the opposer’s CHANEL mark enjoyed a high degree of recognition among consumers; (5) the applicant intended to trade on the goodwill and fame generated by the CHANEL mark; and (6) there was no evidence of any actual association between the applied-for mark and the famous mark.
The TTAB concluded that Chanel had successfully demonstrated that Makarczyk’s CHANEL mark was likely to cause dilution by blurring of its famous mark CHANEL. Accordingly, the Board sustained the opposition.
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