In a rare Section 43(c) dilution decision, the Board sustained Chanel’s opposition to registration of the mark shown below left, for accounting services, finding the mark likely to cause dilution by blurring of Chanel’s famous CC Monogram mark, shown below right. Applicant Camacho & Comacho, appearing pro se, submitted no evidence or testimony and did not file a brief. The Board found that Chanel’s Monogram mark is a “household name” synonymous with high fashion and style, and that the two marks are “highly similar” in appearance and commercial impression. Chanel, Inc. v. Camacho & Camacho, LLP, Opposition No. 91229126 (January 12, 2018) [not precedential] (Opinion by Judge Christopher Larkin).
In order to prove dilution, Opposer Chanel was first required to show that its Monogram mark became famous before applicant’s first use date of January 8, 2002. Applicant submitted numerous pre-2002 advertisements for fashion and cosmetic products in which the Monogram mark appears. Its advertising and promotional expenditures were very substantial. The Monogram mark has been used for more than 90 years on Chanel’s products, and many millions of units have been sold.
Although Chanel offered no probative evidence regarding the extent of actual recognition of the Monogram mark, the Board found that the Monogram mark became famous prior to 2002. The evidence persuaded the Board that the Monogram mark “enjoys widespread recognition among the general public and is a ‘household name’ synonymous with high fashion and style for the products and services identified in the pleaded registrations, and is therefore famous for dilution purposes.”
As to the marks, the Board found their differences “insignificant,” pointing out that side-by-side comparison is not the relevant test. Concluding that the marks are “highly similar in appearance and commercial impression,” it found that “the appearance of the marks overall is sufficiently similar that Applicant’s mark ‘will trigger consumers to conjure up’ Opposer’s famous mark.”
And so the Board sustained the opposition.