TTAB Precedential Decision: CHANEL Mark for Real Estate Likely to Dilute Famous CHANEL Brand
In a precedential decision issued May 27, 2014, the U.S. Trademark Trial and Appeal Board (TTAB) sustained an opposition filed by Chanel, Inc. against an application for registration of the mark CHANEL for "real estate development and construction of commercial, residential and hotel property." The TTAB reasoned that the Applicant's mark is likely to cause dilution by blurring of the Opposer's famous CHANEL brand. Chanel, Inc. established that its mark is famous based on such factors as use of the CHANEL mark in the United States since the 1930s; 15 U.S. Trademark Registrations; "extremely high" annual sales; tens of millions of dollars annually in advertising expenditures; and millions of website visits annually. But consumer recognition is the linchpin of fame, and based on industry awards and survey evidence, the TTAB was persuaded that the CHANEL brand is a "household name" synonymous with high fashion and style, thereby making it famous for dilution purposes.
Based on six factors, the TTAB determined that dilution by blurring was likely, meaning that a substantial percentage of consumers, when seeing the CHANEL mark used in connection with the Applicant's real estate and construction services, would immediately be reminded of the famous CHANEL mark and associate the Applicant's use with Chanel, Inc. In addition, that association would likely impair the distinctiveness of the famous CHANEL mark.
With respect to impairment, the TTAB stated that while Chanel, Inc. currently has no involvement in real estate, many luxury brands license the use of their marks in connection with hotel services. The TTAB considered this evidence sufficient to show that Chanel, Inc. would likely suffer an impairment of the distinctiveness of its CHANEL mark.
Source: Chanel, Inc. v. Jerzy Makarczyk (TTAB May 27, 2014), available at: http://ttabvue.uspto.gov/ttabvue/ttabvue-91208352-OPP-25.pdf
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