Think Tank: Protecting a Brand When It Is Too Well-known

Monica B. Richman and Jonathan Malki

Updated February 8, 2018 at 12:30 AM

Coco Chanel once said that “fashion is not something that exists in dresses only. Fashion is in the sky, in the street, fashion has to do with ideas, the way we live, what is happening.” Fashion, therefore, is not limited to its bare commercial context, but is part of the wider culture. As a result, so too are fashion brands.

On Jan. 12, 2018 the Trial and Appeal Board of the U.S. Patent and Trademark Office issued a decision of interest to the fashion community, ruling that Chanel successfully could prevent the registration of a mark similar to its interlocking “CC Monogram” logo for use in connection with not apparel, accessories, or fragrances — but accounting services.

The decision flows from the principle that some trademarks have become so famous that virtually any use of a similar mark is likely to call to mind and dilute the famous brand — in other words, Chanel trademarks mean Chanel whether they appear on ballet flats or tax forms.

Many brands in the fashion world aim for that level of fame, but how do they achieve it? Sustained product expansion and a forward-thinking trademark registration program are important elements in the goal of global brand dominance and brand protection.

Steady expansion of product offerings is a hallmark of the world’s leading brands. For instance, the Ralph Lauren group of companies has grown from a single brand offering men’s ties to several affiliated brands offering products in distinct but broadly related categories, including apparel, accessories, home goods, and fragrances. Likewise, Salvatore Ferragamo, famous for footwear, has branched into watches and other items; Burberry, master of outerwear, offers beauty products and even a dedicated Apple Music channel. As their product categories have grown, so too have the strength and scope of their iconic marks — as well as the risk that their respective brand equity will be diluted by the use of a similar brand name by an unrelated party on unrelated goods.

To successfully expand into new categories, brand owners should engage in trademark selection and clearance with an eye not just to core offerings, but also related goods that may be of interest in the future. For example, companies focused today on apparel and footwear might tomorrow want to sell bags, cosmetics and linens. Preemptively clearing trademarks in connection with related categories in the core territories of interest will provide a better sense of whether any third-party existing trademarks may obstruct their expansion into a new category.

After determining that a new field is reasonably clear in the desired territory, expansion-minded brand owners (budget permitting) also should apply to register trademarks covering not only core goods but also products they are likely to offer in the relatively near future as well.

Trademark registrations are a primary tool of brand expansion and protection. Trademark registrations create a government record of a brand owner’s trademark rights and, in most jurisdictions, are essential for brand enforcement. Trademark registrations also put third parties on notice that the brand has extended or intends to extend its reach beyond the items for which it is best known. For example, Vera Wang is considered a leading name in bridal fashion. However, its United States trademark portfolio includes nearly fifty registrations and applications for products such as fragrances, cosmetics, bath products, napkin rings, piggy banks and coasters. The Vera Wang registrations establish its scope and breadth as a lifestyle brand in far-reaching product categories. Such a broad footprint of trademark filings also makes it easier to protect the brand from dilution by unauthorized third-party use of the Vera Wang mark for unrelated goods, such as “Vera Wang dog treats.”

There are limits, however, to the power of trademark registrations. In the United States, it is not necessary to register a trademark in order to use it, and the U.S. Trademark Office cannot prevent a newcomer from actually using a trademark that is the same or confusingly similar to an existing trademark registration — only court intervention can prevent such actions.

If a court action should ever become necessary, however, trademark registrations create strong presumptions in the owner’s favor — namely, that the trademark is valid and that the registered owner has priority rights for those categories of goods listed in its trademark registrations. Likewise, the more categories covered in the trademark registrations, in theory, the broader the protection. Chanel’s expansive U.S. portfolio of CC Monogram trademark registrations, including registrations in at least eight distinct product categories across 14 registrations, was an important element in proving the fame of the mark, and that its CC Monogram was entitled to a broad scope of protection — so broad that a third party should not be entitled to register the “CC” logo for accounting services.

Indeed, the decision notes that “[w]hile proof of registration is not conclusive evidence of fame…the number and scope of [Chanel’s] registrations support a finding that the CC Monogram Mark had become famous,” and deserving of broad protection against uses of a similar mark for unrelated services.

Iconic brands leverage their trademark registrations and brand protection efforts to expand their reach and fame, which further enhances their level and scope of protection. Fame alone, however, will not protect against every unwanted third-party use of your trademark. For instance, the notoriety of Louis Vuitton’s famous trademarks were not enough to convince two federal courts to restrain tote bag company My Other Bag from producing canvas bags featuring cartoon reproductions of Louis Vuitton’s famous trademarks. The courts found that use of the Louis Vuitton trademarks amounted to parody of the brand’s luxurious (and high-priced) reputation. In contrast to the Chanel CC Monogram decision, My Other Bag was not seeking to obtain a trademark registration (and presumptive ownership) for a Louis Vuitton mark, but instead used the Louis Vuitton marks in a manner that the court found to be permissible social commentary.

The outcomes of the Louis Vuitton and Chanel cases illustrate the benefits and drawbacks of trademark fame: truly famous brands become a part of culture, which can provide broad protection for the brand but also can provide a target for undesired — but sometimes allowed — use by third parties. Regardless, ambitious brand owners should consider adopting a trademark strategy supporting steady brand expansion and a robust trademark registration program.

Monica B. Richman is a partner in the New York office at Dentons. Her practice focuses on intellectual property counsel to clients who include many of the world’s biggest names in entertainment and fashion. Specialties include licensing, commercial contracts, and intellectual property development, protection and management. Jonathan Malki is an associate with Dentons specializing in the fashion and entertainment industries.

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