Authors: Naresh Kilaru, Julia Anne Matheson
As more and more consumers interact with brands on social media, the Board is increasingly taking note of a brand’s social media presence when considering whether a mark is famous for dilution purposes.
Chanel opposed an application to register the mark CHANEL for real estate services on grounds of likelihood of confusion and dilution. With respect to the dilution claim, the Board easily found that the CHANEL mark was famous. In addition to the types of evidence traditionally used to prove fame such as advertising and sales figures, unsolicited media attention, and consumer surveys, the Board gave significant weight to the high degree of consumer recognition that the CHANEL mark enjoyed on various social media sites. For instance, the Board noted that Chanel’s Facebook page had 9.5 million fans and that Chanel was ranked fifth amongst fashion brands as measured by Facebook “likes.” In addition, Chanel’s Twitter page had over 2 million followers, and its YouTube page over 100,000 subscribers and nearly 40 million views. On Pinterest, the Board noted that Chanel was ranked as the number one shared fashion brand, with 150,000 shares, 58 million total impressions, and an average of 56 “pins” per day and 1244 “re-pins” daily.
While the applicant did not file a brief or submit evidence, attached to the Applicant’s Answer were various websites and PTO records purporting to show third-party use and registration of the term CHANEL. Because this evidence had not been properly introduced into the record, however, the Board did not consider it. The Board also found that Chanel had diligently enforced its rights in the CHANEL mark by having filed over 100 trademark infringement lawsuits and having sent over one thousand cease-and-desist letters over the past 15 years.
In evaluating whether the applicant’s CHANEL mark for real estate services was likely to dilute the distinctiveness of the CHANEL mark, the Board was particularly persuaded by evidence showing that the applicant intentionally tried to create an association with the famous CHANEL mark. For instance, the applicant falsely stated on his website that Chanel had been one of his clients, along with other fashion houses such as Louis Vuitton, Prada, and Gucci. The evidence also showed that the applicant was in the business of marketing rental properties by naming units after luxury brands such as Chanel, Dior, Givenchy, and Versace. The Board found that these intentional efforts to create an association with the CHANEL mark were likely to impair the mark’s distinctiveness.
The Board therefore sustained the opposition based on the dilution claim. It did not consider the likelihood-of-confusion claim.
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