On My Mind Blog

A company owned by adult film actress Stephanie Hodge applied to register her stage name GIGI DIOR for the entertainment services mentioned above.

Christian Dior Couture, S.A. opposed the application on the grounds of (1) likelihood of confusion with the registered DIOR mark for clothing, jewelry and bags, and dilution of Opposer’s famous DIOR mark (2) by blurring its distinctiveness, and (3) by tarnishing its reputation.

The Trademark Trial and Appeal Board (TTAB) decided in favor of the Opposer solely on the dilution by blurring ground, so it did not reach either of the other two grounds.

Under Section 43(c) of the Trademark Act, 15 U.S.C. 1125(c), an Opposer alleging dilution must show that:

1. Opposer owns a famous, distinctive trademark,
2. Applicant is using a mark in commerce that allegedly dilutes Opposer’s famous mark,
3. Applicant’s use of its mark began after Opposer’s mark became famous, and
4. Applicant’s use of its mark is likely to cause dilution by blurring or tarnishment.

Section 43(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.”

Opposer’s DIOR mark is distinctive and famous. Opposer’s mark identifies its French founder, designer and couturier Christian Dior, who the TTAB described as a historical figure recognized in a dictionary definition as a “biographical name.”  Moreover, Opposer introduced overwhelming evidence that its mark is widely recognized by the general consuming public in the U.S.—ownership of multiple DIOR federal registrations without a claim of acquired distinctiveness; decades of consistently large sales of DIOR goods and high revenues based on those sales, as well as extensive promotional efforts for decades through multiple outlets and featuring celebrities and high profile events; third-party articles about Opposer; and Opposer’s DIOR mark recognized for its brand strength by a third-party brand valuation study.  Thus, the TTAB found that DIOR is a household name and a famous mark for purposes of dilution.

Applicant is using its GIGI DIOR mark.  This was uncontested.

Opposer’s mark was famous before Applicant’s first use.  Due to a lack of evidence as to Applicant’s date of first use, it was deemed to be the application filing date of October 29, 2021.  At that time, Opposer’s DIOR mark had been in use in the U.S. for more than 50 years, with strong sales and promotion.

Dilution by blurring is likely.  The TTAB stated that the blurring concern is a gradual whittling away of distinctiveness causing “death by a thousand cuts,” regardless of the presence or absence of actual or likely confusion, competition, or actual economic injury. 

Applicant tried to show that Opposer’s mark is not distinctive:

• Applicant introduced at least 15 third-party registered marks that include the four letters DIOR, but Opposer pointed out that these were merely single term marks that included the same four letters. The TTAB found that these marks did not create the same commercial impression as Opposer’s famous DIOR mark.
• Applicant also contended that there were hundreds of business names incorporating DIOR, but the TTAB found this unconvincing, due to a lack of evidence as to the use of these names in a business to which the public would be exposed.
• Applicant submitted hundreds of webpages from websites, social media, and scheduling sites for beauty professionals, to show common use of DIOR as part of a name or pseudonym, but there was no evidence as to the dates these website and social media content were created, the number of views or visitors in each case, or whether the social media accounts were active.
• Applicant submitted a database showing multiple pornographic actors with DIOR pseudonyms, but there was no information as to its traffic or profiles of these actors, and Opposer only needed to show that its use was “substantially exclusive” not unique or singular.

The TTAB considered the following in discussing dilution by blurring:

1. While the initial term GIGI made the marks different when compared, it did not change the strong similarity created by Applicant adopting Opposer’s famous mark in its entirety.
2. Opposer’s DIOR mark is distinctive, as discussed above.
3. Applicant’s evidence failed to demonstrate that Opposer’s use of DIOR was not substantially exclusive.
4. Opposer’s mark is widely recognized and one of the most valuable brands in the apparel industry.
5. Applicant intended to create an association with Opposer’s famous DIOR luxury fashion brand. This was shown by her use of Opposer’s DIOR poster as the “background” in her advertising photos and videos, and by her efforts to expand her services to include fashion advice.
6. The lack of any actual association between GIGI DIOR and the famous DIOR mark was deemed as a neutral factor, given that Opposer had no plans to expand into Applicant’s niche market and Applicant gave no explanation as to when her use of GIGI DIOR began, how much income she earns, how much she spends for promotion, or how much traffic she gets to her websites or social media accounts.

Accordingly, the TTAB concluded that dilution by blurring was likely, and it sustained the opposition against the application to register GIGI DIOR for Applicant’s services. 

The TTAB did not find it necessary to consider whether the GIGI DIOR service mark for pornographic services was likely to tarnish the reputation of the famous DIOR mark. Was this the first reason that popped into your mind?

Christian Dior Couture, S.A. v. Gramkey Investments, Modeling and Consulting, No. 91281244 (T.T.A.B. Jan. 31, 2025)

For further information, please contact William M. Borchard or your CLL attorney.