IP Law Daily, TRADEMARK—TTAB: Board grants Vogue Magazine’s opposition to registration of VOGUE VEGAN mark on dilution grounds, (Dec 13, 2023)

By Robert Margolis, J.D.

The board highlighted the fame of VOGUE mark and similarity to applied-for VOGUE VEGAN mark.

Finding VOGUE to be a famous mark for magazine publisher Advance Magazine Publishers, Inc., and that an applied-for VOGUE VEGAN mark is sufficiently similar so as to potentially dilute the VOGUE mark, the Trademark Trial and Appeal Board has granted Advance’s opposition to the VOGUE VEGAN application. Separately, however, the Board agreed with VOGUE VEGAN’s owner Brenda Joan Hollifield that she had not abandoned a prior registered VOGUE VEGAN mark, and that the mark was not registered via fraud. The Board thus denied Advance’s Petition for Cancellation (Advance Magazine Publishers Inc. v. Hollifield, November 30, 2023, Cataldo, P.).

Advance owns several registrations of the VOGUE mark for a variety of fashion-related goods and services. Hollifield applied to register VOGUE VEGAN in standard characters in International Class 3, for cosmetics. She is the owner of a registration for VOGUE VEGAN (Serial No. 4811170), in International Class 45, for personal shopping and fashion consulting. VEGAN is disclaimed both in Hollifield’s application and registration.

Advance opposed registration of the VOGUE VEGAN mark, on the grounds that it is likely to cause confusion with the prior registered VOGUE marks, and that it is likely to dilute the VOGUE marks by blurring. It also sought cancellation of Hollifield’s prior-registered mark, claiming she has abandoned the mark and that it was obtained by fraud. Hollifield filed counterclaims asserting that her prior-registered mark has priority over several more recently filed VOGUE registered marks, and that the word “Vogue” itself is not distinctive in light of several third-party registrations that include that word.

Counterclaims. The Board found Hollifield’s counterclaims to be unavailing. While her registration did predate several of Advance’s (such as VOGUE RUNWAY, VOGUEWORLD, and VOGUE WEDDINGS), priority alone does not provide a basis for opposition or cancellation of a mark, the Board noted. It denied her counterclaim for cancellation of those Advance marks, but considered the fact that she has a prior-registered mark, with priority over some Advance marks, as relevant to her arguments in favor of registration of the new VOGUE VEGAN mark.

Hollifield’s other counterclaim asserted that the VOGUE mark is not distinctive but asserted no statutory basis for its allegations. Instead, Hollifield appeared to be arguing that several third-party uses and registrations of marks that include the word “Vogue” are evidence that the VOGUE mark is weak. In response, Advance argued that the VOGUE mark is conceptually and commercially strong, rising to the level of a famous mark. While the Board found that the term “Vogue” itself is somewhat suggestive of the subject matter to which the VOGUE marks relate, the evidentiary record points strongly to the VOGUE mark’s extremely high commercial strength. The Board cited media references to VOGUE as “one of the most recognizable and well-known fashion brands in the United States,” and the “world’s most influential fashion franchise.” Advance’s magazine readership approximates 8.3 million per month, its YouTube channel has approximately 11 million subscribers and its videos over 735 million views, and Advance has tens of millions of followers on its various social media pages. Advance also actively polices its mark, through opposition proceedings before the Board and otherwise. Finally, the VOGUE marks are registered on the Principal Register without a claim of acquired distinctiveness, and therefore are presumed to be distinctive, even if suggestive. In light of this evidence, Hollifield’s proffer of third-party uses and registrations was not convincing and the Board held that VOGUE is inherently distinctive.

Dilution. The elements of a dilution claim are (1) plaintiff owns a famous mark that is distinctive; (2) defendant is using in commerce an allegedly diluting mark; (3) defendant began using that mark after plaintiff’s mark achieved fame; and (4) defendant’s use of the mark is likely to cause dilution by blurring or tarnishment. The Board found that Advance met all of these elements.

As noted above, the Board found the VOGUE marks to be inherently distinctive, and the same evidence of worldwide renown, sales as measured by subscriptions, public recognition of the mark, publicity by Advance of its marks through advertising, and the fact of registration, all established that VOGUE is in fact a famous mark for purposes of the dilution claim. Further, it achieved that fame before the July 31, 2014, date that Hollifield claimed as a constructive first use date.

The Board then found that Hollifield’s use of VOGUE VEGAN is likely to cause dilution through blurring. The marks are similar, as the only difference is the disclaimed term VEGAN in Hollifield’s mark, which could be understood as a variation on Advance’s VOGUE mark, according to the Board. Despite the third-party evidence that Hollifield presented, the Board also found that Advance’s use of the VOGUE mark is substantially exclusive. None of the third-party marks identify a fashion magazine or goods and services sold in connection with a fashion magazine. That, coupled with Advance’s aggressive policing of its mark, supported the substantial exclusivity finding, according to the Board. Finally, the Board noted the wide recognition of the Vogue mark in the United States. These factors sufficed to sustain Advance’s dilution claim (so the Board did not address the likelihood of confusion claim).

Abandonment. The Board, however, agreed with Hollifield that she did not abandon the prior-registered VOGUE VEGAN mark for shopping services and fashion consulting. Advance argued non-use for three consecutive years, but the record showed some small number of sales of her services and small amounts of revenue in 2020 and 2021. And while her website has been “under construction” for years and does not permit sales to be conducted through it, a functioning website is not a prerequisite to use of a mark. Similarly, evidence that the small number of sales in recent years were to persons known to or related to Hollifield did not negate the fact that the sales of her services did occur.

Fraud. Advance’s claim that Hollifield obtained registration of her mark by fraud on the USPTO was based primarily on the “token” sales activity that Advance argued do not amount to “bona fide use of the mark.” For the same reasons that evidence did not establish abandonment, the Board held that Advance’s fraud claim failed. There was no evidence that either Hollifield or her attorney made a false statement in the application, or that there was any intent to do so.

The case is Opposition No. 91247611 and Cancellation No. 92072531.

Attorneys: Jordan Lavine (Flaster Greenberg PC) for Advance Magazine Publishers Inc. Sandra P. Thompson (Finlayson Toffer Roosevelt & Lilly LLP) for Brenda Joan Hollifield.

Companies: Advance Magazine Publishers Inc.

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