IP Law Daily, TRADEMARK—TTAB: Opposition to registration of GIGI DIOR mark sustained for dilution by blurring, (Feb 4, 2025)

By Patricia K. Ruiz, J.D.

The TTAB found that the applicant intended to create an association with the famous DIOR mark.

The Trademark Trial and Appeal Board (TTAB) sustained an opposition by Christian Dior Couture, S.A., on the ground of dilution by blurring. The TTAB determined that DIOR is a distinctive mark that is diluted by the applicant’s use of the applied-for mark in commerce, that the applicant’s use of the mark began after the opposer became famous, and that the applicant’s use of the mark is likely to cause dilution by blurring (Christian Dior Couture, S.A. v. Gramkey Investments, Modeling and Consulting, No. 91281244 (T.T.A.B. Jan. 31, 2025)).

Applied-for mark. Gramkey Investments, Modeling and Consulting applied to register the mark GIGI DIOR on the Principal Register for “Entertainment services, namely, personal appearances by a porn star; Entertainment services, namely, providing a web site featuring non-downloadable adult-themed photographs and videos,” in International Class 41. Christian Dior Couture, S.A. opposed registration of the mark on three grounds: (1) the applicant’s mark so resembles the opposer’s previously used and registered DIOR mark for clothing, jewelry, and bags that, when used in connection with the applicant’s service, is likely to cause confusion; (2) the opposer’s mark is famous; and (3) the applicant’s mark is likely to dilute the mark’s distinctiveness by blurring and to tarnish its reputation. Applicant’s answer admits its mark includes the word DIOR and that the opposer has prior rights in its DIOR marks.

Alleged dilution. The opposer alleged dilution by both blurring and tarnishment. To prevail, it must show that: (1) it owns a famous mark that is distinctive; (2) the applicant is using a mark in commerce that allegedly dilutes the opposer’s famous mark; (3) the applicant’s use of its mark began after the opposer became famous; and (4) the applicant’s use of its mark is likely to cause dilution by blurring or tarnishment. Dilution by blurring is an association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.

Fame of mark. The TTAB found unconvincing the applicant’s challenges to the sufficiency of the opposer’s considerable evidence of the DIOR mark’s fame. The TTAB also determined that the DIOR mark was famous prior to October 29, 2021, the date of the opposed mark’s filing. Further, the TTAB was unconvinced by the applicant’s evidence purporting to show that the public perception of the DIOR mark is diluted by third-party registration and third-party use of marks containing DIOR.

Blurring factors. Turning to the dilution by blurring factors, the TTAB first looked to the degree of similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. In the dilution context, the similarity between the famous mark and the allegedly blurring mark need not be substantial in order for the dilution by blurring claim to succeed. Thus, the TTAB needed to determine whether the GIGI DIOR mark is sufficiently similar to the opposer’s DIOR mark as to “trigger consumers to conjure up” the opposer’s mark.

Next, the TTAB looked to how distinctive the DIOR mark is to the public. The fashion designer DIOR is a historical figure with a dictionary entry, and the TTAB had testimony and documentation demonstrating that DIOR has remained in the public eye through the opposer’s utilization of celebrity relationships and has ranked high in brand strength in a third-party study. Further, the record is devoid of any third-party registered or common law DIOR marks for clothing items of fashion accessories. The TTAB found that the origin of the opposer’s mark as a surname does not detract from its distinctiveness, weighing in favor of finding dilution by blurring.

Having examined the evidence of third-party use of DIOR, the TTAB found the mere appearance of the letters DIOR in connection with a business on the internet, with no supporting information regarding public awareness of the third-party use, is insufficient to demonstrate that the opposer’s use of DIOR is not substantially exclusive, weighing in favor of finding a likelihood of dilution by blurring. Further, the TTAB found the DIOR mark is widely recognized and has been reported as one of the most valuable brands in the apparel industry, weighing in favor of finding a likelihood of dilution by blurring. Finally, the TTAB found that the applicant intended to create an association with the famous DIOR mark, due to her repeated use of the mark in connection with rendering and promoting her services and due to her efforts to expand her services to fashion advice. The TTAB sustained the opposition on the ground of dilution by blurring.

The Case is Opposition No. 91281244.

Judge: Dunn, E.

Attorneys: Thomas M. Williams (Barack Ferrazzano Kirschbaum & Nagelberg LLP) for Christian Dior Couture, S.A. Gramkey Investments, Modeling and Consulting, pro se.

Companies: Christian Dior Couture, S.A.

Cases: Trademark USPTO GCNNews