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Thursday, 4 September 2014
Fashion Week has just started in New York, and to mark this event, here is an interesting trade mark and fashion case, filed not in New York however, but in Indiana.
Fashion and cosmetics company Chanel is suing Chanel’s Salon LLC, a beauty salon located in Merrillville, Indiana, and its owner, Chanel Jones, for trade mark infringement and trade mark dilution. The case is Chanel Inc. v. Chanel’s Salon and ChanelJones, 2:14-cv-00304. As you can read, the first name of the salon’s owner is Chanel.
[It is particularly appropriate that this case should be discussed on the IPKat blog, as Chanel is a popular name for cats in France, since “chat” means “cat” in French. Karl Lagerfeld, Chanel’s head designer, has a chat, but he named her Choupette.]
Chanel owns several Chanel trade marks. The French company sells haute couture, ready-to-wear clothes and accessories, but also a complete line of cosmetics and perfumes, under the mark Chanel Beauté. These items are sold in Chanel-operated boutiques and in department stores.
Defendant, Chanel’s Beauty Salon, offers haircutting and styling services, as well as make-up and facial waxing services. As such, the complaint argues that it offers services related to Chanel’s goods and services, and infringes Chanel’s trade marks. According to the complaint, Chanel sent Ms. Jones a cease and desist letter in July 2013, asking her to change the name of her salon to one not using the name Chanel, and further attempted to negotiate with Defendant before filing suit.
Section 43(c) of the Trademark Act provides for a cause of action for the dilution of famous marks. Chanel claims that Defendant is diluting the famous Chanel trade mark by impairing its distinctiveness, that is, dilution by blurring. 15 USC § 1125 (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.” Plaintiff only needs to prove likelihood of blurring. The Chanel mark is indeed famous; the complaint states that the fashion newspaper Women’s Wear Daily listed Chanel in the top 10 of the top 100 beauty brands in 2012 and 2013, and that the Trademark Trial and Appeal Board (TTAB) this year found Chanel to be a famous mark for dilution purposes in Chanel, Inc. v. Jerzy Makarczyk.
Plaintiff also claims that Defendant is infringing its trade marks, and that her use of Chanel’s salon in commerce is likely to cause confusion. It also claims unfair competition and trade mark infringement and unfair competition under Indiana common law. It is asking the court for a permanent injunction.
This is not the first time Chanel is suing the owner of a beauty salon using her real name as her salon’s name. Dana Chanel Beauty Salon and Barber Studio registered its Dana Chanel trade mark in class 44 for hair salon services in 2013, and Chanel’s opposition to this mark is pending at the TTAB.
In Chanel Inc. v. Chanel’s Salon and Chanel Jones, Plaintiff was careful to state in its complaint that the case is not about preventing Defendant to use her name to identify herself, but rather about using a trade name for a beauty business exploiting Chanel commercially. The complaint notes that Ms. Jones is not using her whole name, Chanel Jones,” but is instead only using that part of her name that copies Chanel’s famous CHANEL trademark.”
It is possible to register a personal name as a trade mark. However, under the Trademark Act, 15 U.S.C. 1052 (e)(4), a mark cannot be registered if it is “primarily merely a surname.” In order to be registered, the mark must have acquired secondary meaning, that is, the public must associate the name with the product or services. The Trademark Manual of Examining Procedures has a paragraph 1211.01(a)(v) dedicated to ‘Rare Surnames‘ which explains that “[t]he rarity of a surname is an important factor to be considered in determining whether a term is primarily merely a surname.” Nothing is said about rare first names.
Indeed, the Trademark Act does not address the issue of first names as trade marks. Ms. Jones used her first name, Chanel, which is quite rare, not her last name, Jones, which is more common. If she would name her salon and register a “Chanel Jones” trade mark, she could be successful, and it is also possible that a court would not consider the mark as diluting, or being likely to dilute, the famous Chanel mark. One of the six non-exclusive factors listed by 15 USC § 1125 (c)(2)(B), used by courts to determine whether there is dilution by blurring, or likelihood of dilution by blurring, is the degree of similarity between the two marks. Another factor is whether user of the mark intended to create an association with the famous mark. It could be argued that Chanel Jones is not similar to Chanel and that is does not create an association with Chanel, as it would be clear for consumers that Chanel is a first name. Let’s see how the case develop...