This Opinion is Not a
Precedent of the TTAB

Mailed: January 12, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Chanel, Inc.
v.
Camacho & Camacho, LLP
_____

Opposition No. 91229126
_____

Barbara A. Solomon and Emily Weiss, of Fross Zelnick Lehrman & Zissu PC, for
Chanel, Inc.

Camacho & Camacho, LLP, pro se.
_____

Before Kuhlke, Adlin, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:

Camacho & Camacho, LLP (“Applicant”), appearing pro se, seeks registration of

the mark shown below on the Principal Register for accounting services, in

International Class 35.1

1Application Serial No. 86674771 was filed on June 25, 2015 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), on the basis of Applicant’s claim of first use and first
use of the mark in commerce on January 1, 1999.
Opposition No. 91229126

2

Chanel, Inc. (“Opposer”) has opposed registration on the basis of a single claim,

under Sections 13 and 43(c) of the Trademark Act, 15 U.S.C. §§ 1063, 1125(c), that

Applicant’s use of the mark in connection with the services identified in the

application is likely to dilute the distinctiveness of the “CC Monogram Mark,”

depicted below in three forms, which is the subject of the 14 pleaded registrations

described below:

(1)
shown in

• Registration No. 4505440 for cellular phone accessory charms, in International

Class 9;3

2The mark is described in the application as consisting of “intertwined capital letter ‘C’s’, one
normal appearance the other reverse, enclosed by quasi square border.”
3Issued on April 1, 2014. The mark is described in the registration as consisting of “of back-
to-back, interlocking “C’s”, surrounded by a circle.”

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Opposition No. 91229126

• Registration No. 1654350 for make-up brushes, in International Class 21;4

• Registration No. 1347094 for a full line of perfumery, cosmetics, and toiletries,

in International Class 3;5

• Registration No. 1271876 for clothing-namely, coats, dresses, blouses,

raincoats, suits, skirts, cardigans, sweaters, pants, jackets, blazers, and shoes,

in International Class 25;6

• Registration No. 1241264 for suits, jackets, skirts, dresses, pants, blouses,

tunics, sweaters, cardigans, tee-shirts, coats, raincoats, scarves, shoes and

boots, in International Class 25;7

• Registration No. 799642 for bath powder, bath oil, after shave lotion and after

bath oil spray, in International Class 3;8

• Registration No. 399751 for toilet soap, in International Class 3;9 and

• Registration No. 195359 for face powder, perfume, eau de cologne, toilet water,

lipstick, and rouge, in International Class 3;10

4 Issued on August 20, 1991 and last renewed on September 21, 2011.
5 Issued on July 9, 1985 and last renewed on June 25, 2015.
6 Issued on March 27, 1984 and last renewed on February 4, 2014.
7 Issued on June 7, 1983 and last renewed on March 22, 2013.
8 Issued on November 30, 1965 and last renewed on February 6, 2016.
9 Issued on January 26, 1943 and last renewed on January 24, 2013.
10 Issued on February 24, 1925 and last renewed on March 7, 2015.

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Opposition No. 91229126

(2)
shown in

• Registration No. 4074269 for protective covers for portable electronic devices,

handheld digital devices, personal computers and cell phones, in International

Class 9; temporary tattoos, in International Class 16; and key cases, in

International Class 18;11

• Registration No. 1734822 for leather goods, namely, handbags, wallets, travel

bags, luggage, business card cases, change purses, tote bags, and cosmetic bags

sold empty, in International Class 18;12

• Registration No. 1654252 for sunglasses, in International Class 9;13

• Registration No. 1314511 for leather goods-namely handbags, in International

Class 18;14 and

• Registration No. 1293398 for retail store services in the field of ready-to-wear

clothing, in International Class 42;15 and

11Issued on December 20, 2011. The mark is described in the registration as consisting “of
back-to-back interlocking Cs.”
12 Issued on November 24, 1992 and last renewed on November 13, 2012.
13 Issued on August 20, 1991 and last renewed on February 16, 2011.
14 Issued on January 15, 1985 and renewed on January 26, 2015.
15 Issued on September 4, 1984 and renewed on September 16, 2014.

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Opposition No. 91229126

(3)
shown in Registration No. 1501898 for keychains, in International Class 6; costume

jewelry, in International Class 14; gift wrapping paper, in International Class 16;

blouses, shoes, belts, scarves, jackets, and men’s ties, in International Class 25; and

brooches and buttons for clothing, in International Class 26.16

The parties stipulated to resolution of this case under a modified version of the

Board’s Accelerated Case Resolution (“ACR”) procedure. 7 TTABVUE; 9 TTABVUE.

Only Opposer submitted evidence and filed a brief. We sustain the opposition.

I. Evidentiary Record

In their ACR stipulation, the parties agreed to submit evidence in the form of

declarations, affidavits, or notices of reliance, subject to cross-examination. 7

TTABVUE 3-5. Applicant did not cross-examine any of Opposer’s declarants, or object

to any of Opposer’s evidence, and we have considered all of it for whatever probative

value it may have. The facts established by the record are effectively undisputed.17

16 Issued on August 30, 1988 and renewed on July 14, 2008.
17 As discussed below, Opposer made of record several of Applicant’s discovery responses,
treating them as if they were evidence on behalf of Applicant, and responding to statements
made therein by Applicant as if they were Applicant’s legal arguments. We will treat these
discovery responses in the same manner. See Trademark Rule 2.122(a), 37 C.F.R. § 2.122(a)
(“When evidence has been made of record by one party in accordance with these rules, it may
be referred to by any party for any purpose permitted by the Federal Rules of Evidence.”)

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Opposition No. 91229126

The record consists of:

(1) the pleadings;18

(2) the file of Applicant’s application, by operation of Trademark Rule 2.122(b)(1),

37 C.F.R. § 2.122(b)(1);

(3) the declaration of Joyce Green, Opposer’s Executive Vice President of Fashion,

and Exhibits 1-75 attached thereto, 16-27 TTABVUE,19 the declaration of

Taryn C. Looney, Opposer’s Director-Counsel, and Exhibits 76-83 thereto, 29

TTABVUE, and the declaration of Emily Weiss, Opposer’s counsel of record,

and Exhibits 84-86 thereto, 30 TTABVUE;20

(4) Opposer’s Notices of Reliance on certain of Applicant’s written discovery

responses (Exhibits 87-88 thereto), 30 TTABVUE, and on printed publications

and Internet materials (Exhibits 89-92 thereto), 31 TTABVUE;

18In a November 15, 2016 order following the parties’ discovery conference, the Board found
that Applicant’s Answer, 4 TTABVUE, admitted Opposer’s ownership of its pleaded
registrations and their validity and registered status, and otherwise denied the salient
allegations of the Notice of Opposition. 1 TTABVUE. The Board also found that the
affirmative defenses set forth in the Answer were merely amplifications of Applicant’s
denials. 8 TTABVUE 7-8.
19 Portions of Ms. Green’s declaration and various exhibits thereto were designated
“Confidential-Attorneys Eyes Only” under the Board’s Standard Protective Order. This
evidence was redacted in the publicly accessible version of Ms. Green’s declaration, and was
filed under seal at 16-21 TTABVUE. Citations in this opinion to Ms. Green’s testimony are
to paragraphs in the public (redacted) version of her declaration at 22 TTABVUE. Citations
to exhibits are to exhibit numbers and TTABVUE pages in the public versions of the exhibits
at 22-27 TTABVUE. We will summarize in general terms the evidence that was designated
confidential.
20 Citations in this opinion to testimony in the Looney and Weiss declarations are to
paragraphs in those declarations at 28 TTABVUE and 29 TTABVUE, respectively. Citations
to exhibits are to exhibit numbers and TTABVUE pages.

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Opposition No. 91229126

(5) Opposer’s pleaded registrations, by virtue of attachment as Exhibit A to its

Notice of Opposition of printouts from the Patent and Trademark Office’s

Trademark Status & Document Retrieval database showing their current

status and title, pursuant to Trademark Rule 2.122(d)(1), 37 C.F.R.

§ 2.122(d)(1), 1 TTABVUE 19-71; and

(6) The following stipulated facts (reproduced verbatim from the ACR

stipulation):21

(a) The existence of and Opposer’s ownership of the pleaded registrations

attached to the Notice of Opposition.

(b) Opposer has standing to bring the Opposition.

(c) Opposer’s pleaded registrations are valid and subsisting.

(d) Opposer’s use of the CC Monogram mark precedes the application filing

date of the opposed CC mark by Applicant and the use of said mark by

Applicant.

(e) Applicant was aware of Opposer’s CC Monogram prior to its adoption of the

mark opposed and prior to the filing date of the opposed application.

(f) Applicant is not associated, affiliated or connected in any way with Opposer

or its business.

(g) Applicant is a New Jersey limited liability partnership doing business at

4105 US Highway 1, Suite 12I, Monmouth Junction, NJ 08852.

21 7 TTABVUE 2-3.

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Opposition No. 91229126

(h) On June 25, 2015, Applicant filed an application based on use to register

the opposed CC mark for “accounting services” in Class 35. The application

was assigned Serial No.86/674,771.

II. Opposer’s Dilution Claim

In view of the parties’ stipulation that Opposer has standing, we proceed to

consider the claim of dilution by blurring.

A. The Law of Dilution

The Trademark Act provides a cause of action in an opposition for the dilution of

a famous mark under Sections 13 and 43(c), 15 U.S.C. §§ 1063 and 1125(c). Section

13(a) of the Act provides as follows:

Any person who believes that he would be damaged by the
registration of a mark upon the principal register,
including the registration of any mark which would be
likely to cause dilution by blurring or dilution by
tarnishment under section 1125(c) of this title, may, upon
payment of the prescribed fee, file an opposition in the
Patent and Trademark Office.

Section 43(c) of the Act provides as follows:

Subject to the principles of equity, the owner of a famous
mark that is distinctive, inherently or through acquired
distinctiveness, shall be entitled to [relief] against another
person who, at any time after the owner’s mark has become
famous, commences use of a mark or trade name in
commerce that is likely to cause dilution by blurring or
dilution by tarnishment of the famous mark, regardless of
the presence or absence of actual or likely confusion, of
competition, or of actual economic injury.

Opposer specifically asserts a claim of dilution by “blurring.” 15 TTABVUE 15.

Section 43(c)(2)(B) of the Trademark Act defines dilution by blurring as an

“association arising from the similarity between a mark or trade name and a famous

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Opposition No. 91229126

mark that impairs the distinctiveness of the famous mark.” 15 U.S.C. § 1125(c)(2)(B).

“‘Dilution diminishes the ‘selling power that a distinctive mark or name with

favorable associations has engendered in the mind of the consuming public.’” Chanel,

Inc. v. Makarczyk, 110 USPQ2d 2013, 2018 (TTAB 2014) (quoting Toro Co. v.

ToroHead Inc., 61 USPQ2d 1164, 1182 (TTAB 2001) (internal citation omitted)).

The Federal Circuit has set forth the following elements that an opposer must

prove to prevail on a dilution by blurring claim:

(1) the opposer 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’s
mark became famous; and

(4) the applicant’s use of its mark is likely to cause dilution
by blurring.

Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1723-

24 (Fed. Cir. 2012). Opposer bears the burden of proving its dilution claim by a

preponderance of the evidence. Makarczyk, 110 USPQ2d at 2017.

B. Was the CC Monogram Famous When Applicant’s Use of Its Mark
Began?

1. The Standards for Proof of Fame

“A threshold question in a federal dilution claim is whether the mark at issue is

‘famous.’ [A] mark is famous if it is ‘widely recognized by the general consuming

public of the United States as a designation of source of the goods or services of the

mark’s owner.’” Coach, 101 USPQ2d at 1724 (quoting 15 U.S.C. § 1125(c)(2)(A)). “‘It

is well established that dilution fame is difficult to prove.’” Makarczyk, 110 USPQ2d

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Opposition No. 91229126

at 2019 (quoting Coach, 101 USPQ2d at 1724 (internal quotation omitted)). To prove

it, “[a]n opposer must show that, when the general public encounters the mark ‘in

almost any context, it associates the term, at least initially, with the mark’s owner.’”

Id. (quoting Coach, 101 USPQ2d at 1724). “In addition, ‘a mark must be not only

famous, but also so distinctive that the public would associate the term with the

owner of the famous mark even when it encounters the term apart from the owner’s

goods or services, i.e., devoid of its trademark context.’” Id. (quoting Toro, 61 USPQ2d

at 1177).

The Trademark Act lists four non-exclusive factors to consider when determining

whether a mark is famous:

i. The duration, extent, and geographic reach of advertising
and publicity of the mark, whether advertised or publicized
by the owner or third parties.

ii. The amount, volume, and geographic extent of sales of
goods or services offered under the mark.

iii. The extent of actual recognition of the mark.

iv. Whether the mark was registered under the Act of March
3, 1881, or the act of February 20, 1905, or on the principal
register.

15 U.S.C. § 1125(c)(2)(A).

2. The Date by Which Opposer Must Prove That Its CC
Monogram Mark Had Become Famous

“The third prong [of the test for dilution] requires the owner of a famous mark to

demonstrate that its mark became famous prior to applicant’s established use or

filing date.” Makarczyk, 110 USPQ2d at 2024. Like this case, Makarczyk involved a

dilution claim against a use-based application in which the applicant submitted no

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Opposition No. 91229126

evidence in an ACR proceeding. The Board held that in the absence of evidence of the

applicant’s date of actual first use,22 the date by which Opposer had to prove that its

mark had become famous was the filing date of the opposed application, which is the

applicant’s date of constructive use under Section 7(c) of the Trademark Act, 15

U.S.C. § 1057(c). Id. (citing Coach, 101 USPQ2d at 1725).

Here, however, Applicant’s June 25, 2015 filing date is not the date by which

Opposer must prove that its mark had become famous because Opposer itself fixed

an earlier date by arguing in its brief that the “earliest date that Applicant has been

able to establish is January 8, 2002.” 15 TTABVUE 17.23 Opposer thus must show

that its mark became famous by January 8, 2002. See Citigroup, 94 USPQ2d at 1665

(requiring opposer to prove that its mark became famous prior to established date of

applicant’s first use of its mark, not its filing date).

3. Opposer’s Evidence of Fame

a. Discussion of the Fame of the CC Monogram Mark in Prior
Proceedings

Opposer made of record numerous “judgments and decisions rendered in cases

brought by [Opposer] for trademark infringement and dilution [in which] courts have

acknowledged the fame and/or strength of the CC Monogram Mark,” as well as a non-

precedential Board decision, Chanel, Inc. v. Mauriello, Opp. No. 91172654 (TTAB

22Trademark Rule 2.122(b)(2), 37 C.F.R. § 2.122(b)(2), provides that the “allegation in an
application for registration . . . of a date of use is not evidence on behalf of the applicant . . .;
a date of use of a mark must be established by competent evidence.”
23Opposer made of record an invoice bearing that date. Weiss Decl. ¶ 4; Ex. 86 (29 TTABVUE
3, 13-14).

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Opposition No. 91229126

Sept. 20, 2010) (10 TTABVUE in Opp. No. 91172654), in which the Board found that

Opposer’s CHANEL word mark and “all of the variations of the [CC Monogram Mark]

are extremely famous and have been a fashion fixture for nearly a century.” Id. at 10

TTABVUE 15. Looney Decl. ¶¶ 14-16; Exs. 80-82 (28 TTABVUE 6-10, 218-473).24

The findings of fame in the civil cases do not establish the fame of the CC

Monogram Mark for purposes of Opposer’s dilution claim here. As the Board

explained in Citigroup Inc. v. Capital City Bank Grp. Inc., 94 USPQ2d 1645, 1665-66

(TTAB 2010), aff’d on other grounds, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011):

The decision by another court based upon a different record
is not evidence in this proceeding. Section 17(a) of the
Trademark Act of 1946, 15 U.S.C. § 1067(a), gives the
Board the authority and duty to decide the right to
registration in an opposition. That duty may not be
delegated by the adoption of conclusions reached by
another court on a different record. Suffice it to say that an
opposition must be decided on the evidence of record.…
[The] applicant cannot be bound by the findings of fact of
another court that were not duplicated in this proceeding.

Our decisions in Makarczyk and Mauriello also do not establish the fame of the

CC Monogram Mark for dilution purposes for the same reasons. We may not be bound

by findings of fact made on a different record involving another party and presenting

different facts. Fame is a factual matter that must be established on the record in

each proceeding. Whether the record in Opposer’s previous proceedings was sufficient

24 Ms. Looney, Opposer’s witness regarding the registration and enforcement of the CC
Monogram Mark, has been employed by Opposer as an in-house attorney since 2011. Looney
Decl. ¶ 1 (28 TTABVUE 2). She testified that her knowledge of the history of Opposer’s
registration and enforcement of the CC Monogram Mark is based upon her job duties, and
her research in, and review of, Opposer’s records and documents kept in the ordinary course
of Opposer’s business. Looney Decl. ¶¶ 1-3 (28 TTABVUE 2-3). We find that she has personal
knowledge of these matters and is competent to testify about them. Fed. R. Evid. 602.

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Opposition No. 91229126

to establish its fame in other timeframes is not relevant to whether the record in this

proceeding is sufficient to establish fame now. “[I]t is well settled that a decision in

a prior case is incompetent as proof of any fact recited therein as against one who was

not a party thereto.” Chicken Delight, Inc. v. Delight Wholesale Co., 193 USPQ 175,

177 (TTAB 1976) (citing Aloe Creme Labs., Inc. v. Bonne Bell, Inc., 168 USPQ 246

(TTAB 1970)); cf. Hyde Park Footwear Co. v. Hampshire-Designers, Inc., 197 USPQ

639, 641 (TTAB 1977) (findings of fact in an opposition between and opposer and a

third party cannot be used against a different applicant). In the non-precedential

decision in Mauriello, the Board found that the CC Monogram Mark was famous for

purposes of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C.

§ 1052(d), not for dilution purposes, an important distinction.25 In the precedential

Makarczyk decision, the Board found Opposer’s CHANEL word mark, not the CC

Monogram Mark, to be famous for dilution purposes.26

Applicant admitted that it had no evidence to dispute Opposer’s claim that the CC

Monogram Mark was famous for dilution purposes, but left Opposer to prove that its

mark was famous at the time Applicant started using its mark. 30 TTABVUE 14-15

25“Fame for likelihood of confusion purposes and fame for dilution purposes… are different
concepts.… While dilution fame is an either/or proposition—fame either does or does not
exist—likelihood of confusion fame ‘varies along a spectrum from very strong to very weak.’”
Palm Bay Imps., Inc. v. Veuve Cliquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1694 (Fed. Cir. 2005) (quoting In re Coors Brewing Co., 343 F.2d 1340, 68
USPQ2d 1059, 1063 (Fed. Cir. 2003)).
26Citing Makarczyk, Opposer argues that the CC Monogram Mark is “the visual symbol of
Chanel” and “equally famous” to the word mark, 15 TTABVUE 8, but Opposer must
separately show the fame of the CC Monogram Mark to prevail here.

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Opposition No. 91229126

(Response to Request for Admission No. 1). We turn now to a review of the evidence

offered by Opposer to establish such fame.

b. General Background Regarding Opposer’s Business

Opposer’s CC Monogram Mark is derived from the initials of Opposer’s founder,

Gabrielle “Coco” Chanel. Green Decl. ¶¶ 4, 11 (22 TTABVUE 3, 5).27 Ms. Chanel

entered the fashion business in France in 1910, and subsequently expanded her

business to beauty products. Green Decl. ¶¶ 4-5 (22 TTABVUE 3-4). In 1921, she

introduced her first perfume, Chanel No. 5, which was branded with the CC

Monogram Mark, and in 1924, she introduced additional beauty products branded

with the mark. Green Decl. ¶ 5 (22 TTABVUE 4). By 1934, Ms. Chanel’s company

was selling fashion and beauty products worldwide, including in the United States.

Green Decl. ¶ 6 (22 TTABVUE 4).

Following World War II, Ms. Chanel and her company expanded their product line

into handbags, wallets, and other leather accessories, Green Decl. ¶ 17 (22 TTABVUE

7-8), which bore hardware bearing the CC Monogram Mark beginning in the 1970s.

Green Decl. ¶¶ 7, 17 (22 TTABVUE 4, 7-8). Use of the CC Monogram Mark on men’s

fragrance products and personal care products in the United States began in the

1950s, Green Decl. ¶ 22 (22 TTABVUE 9-10), use on clothing and related products in

27 Ms. Green, Opposer’s witness regarding the history of Opposer and the CC Monogram
Mark, and multiple other matters, has been employed by Opposer in various positions since
2007. Green Decl. ¶ 1 (22 TTABVUE 2). She testified that her knowledge of matters that
preceded the period of her employment with Opposer is based upon her various job duties
and her research in, and review of, Opposer’s records and documents kept in the ordinary
course of Opposer’s business. Green Decl. ¶¶ 1-3 (22 TTABVUE 2-3). We find that she has
personal knowledge of the matters that are the subject of her declaration and is competent
to testify about them. Fed. R. Evid. 602.

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Opposition No. 91229126

the United States began no later than the early 1960s, Green Decl. ¶ 17 (22

TTABVUE 7-8), and use on fashion accessories such as scarves, shoes, and costume

jewelry in the United States began in the 1980s. Green Decl. ¶ 16 (22 TTABVUE 7).

After Ms. Chanel died in 1971, Opposer launched a full line of skin care and

cosmetics products, and a few years later launched a retail collection of ready-to-wear

fashion and accessories. Green Decl. ¶ 9 (22 TTABVUE 5). In the 1980s, Opposer

began opening boutiques in various locations in the United States. Green Decl. ¶ 9

(22 TTABVUE 5). The CC Monogram Mark figured prominently in these expansions

of Opposer’s business. Green Decl. ¶ 9 (22 TTABVUE 5). In 1983, designer Karl

Lagerfeld was appointed Opposer’s “Artistic Director,” and Opposer expanded its

business into cutting-edge luxury fashion design. Green Decl. ¶ 10 (22 TTABVUE 5).

Opposer has used the variations of the CC Monogram Mark shown below, as well

as more fanciful ones.

Green Decl. ¶ 12 (22 TTABVUE 6). The consistent element in these displays has been

the interlocking back-to-back letters C. Green Decl. ¶ 13 (22 TTABVUE 6).

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Opposition No. 91229126

c. Non-Exclusive Fame Factors

(i) Advertising and Publicity of the CC Monogram Mark
in the United States

Opposer has used a wide range of media to advertise and promote its products in

the United States. Green Decl. ¶ 44 (22 TTABVUE 19). The CC Monogram Mark has

appeared in the vast majority of the advertisements for Opposer’s fashion and

cosmetics products, either as a standalone element in the advertisement, or on the

advertised product or its packaging (or both). Green Decl. ¶ 44; Ex. 21 (22 TTABVUE

19; 23 TTABVUE 774-863). Portions of a few of the advertisements from the period

between 1925 and 1998 are reproduced below:

Vogue, June 1, 1934 (23 TTABVUE 780-781)

New Yorker, June 19, 1948 (23 TTABVUE 786).

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Opposition No. 91229126

Harper’s Bazaar, November 1969 (23 TTABVUE 797).

Harper’s Bazaar, November 1979 (23 TTABVUE 801).

The pre-2002 advertisements in the record frequently featured celebrities and

models such as Marilyn Monroe, Catherine Deneuve, Carole Bouquet, and Ali

McGraw. Green Decl. ¶ 54; Ex. 30 (22 TTABVUE 27; 24 TTABVUE 96-146). A 1966

advertisement featuring Ms. McGraw is reproduced below.

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Opposition No. 91229126

Opposer focuses on print advertising in national and regional magazines and

newspapers, including fashion periodicals such as Vogue, men’s magazines such as

GQ, specialty publications such as Architectural Digest, and general interest

publications such as People and The New York Times. Green Decl. ¶ 47 (22 TTABVUE

20-24. Between 1988 and 1998, Opposer’s advertisements displaying the CC

Monogram Mark appeared in over 100 national publications and over 150 regional

publications, as well as in selected trade publications, and such advertising has

continued to the present. Green Decl. ¶ 47 (22 TTABVUE 20-24). Ms. Green testified

that more than 1 billion copies of print advertisements displaying the CC Monogram

Mark appeared in print publications between 1988 and 1998, and more than 5 billion

copies appeared between 1999 and the present. Green Decl. ¶ 48 (22 TTABVUE 24).

She estimated, on the basis of circulation figures for publications such as The New

York Times, Vogue, Cosmopolitan, Glamour, and Rolling Stone, that print advertising

displaying the CC Monogram Mark had reached tens of millions of people in the

United States as of 1998. Green Decl. ¶ 49 (22 TTABVUE 24-25).

Opposer has also advertised products bearing the CC Monogram Mark on both

network and cable television for more than 40 years. Green Decl. ¶ 50 (22 TTABVUE

25). Opposer’s television advertising has often featured well-known celebrities and

models. Green Decl. ¶ 50; Ex. 23 (22 TTABVUE 25; 24 TTABVUE 41-44). A

screenshot from a 1977 commercial featuring Ms. Deneuve is depicted below.

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Opposition No. 91229126

24 TTABVUE 43.

Opposer’s specific advertising and promotional expenditures, and Opposer’s rank

in such expenditures vis-à-vis its competitors in the cosmetics and fashion industries,

were designated Confidential-Attorneys Eyes Only. Green Decl. ¶¶ 44-45 (22

TTABVUE 18-19). We have reviewed the uncontradicted designated testimony and it

reliably establishes that Opposer’s advertising and promotional expenditures,

including those incurred before 2002, have been very substantial and have grown

steadily after 1988, and that Opposer has been among the most prolific advertisers

in the beauty and fashion businesses.

In addition to Opposer’s own advertising, third-party retailers such as Bergdorf

Goodman, Saks Fifth Avenue, I. Magnin, and Bloomingdales have advertised and

promoted Opposer’s products bearing the CC Monogram Mark through print

advertising, catalogs, and other means. Green Decl. ¶ 54; Ex. 31 (22 TTABVUE 27;

24 TTABVUE 147-210).

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Opposition No. 91229126

The CC Monogram Mark has also been exposed to the United States public

through published and widely disseminated photographs of numerous well-known

people such as the late Princess Diana wearing products bearing the CC Monogram

Mark. Green Decl. ¶¶ 55-57; Exs. 33-35 (22 TTABVUE 27-29; 24 TTABVUE 242-345).

Photographs of celebrities wearing products bearing the CC Monogram Mark

typically appear in unsolicited articles in publications in which Opposer does not

advertise, which increases the exposure of the mark beyond Opposer’s own

advertising. Green Decl. ¶ 57 (22 TTABVUE 29).

The CC Monogram Mark has also been displayed and/or discussed in media

articles in general circulation publications. Green Decl. ¶¶ 58-60; Exs. 36-37 (22

TTABVUE 29-34; 24 TTABVUE 346-488; 25 TTABVUE 3-290). Ms. Green testified

that “third-party publications commonly acknowledge the fame and prominence of

the CC Monogram Mark,” Green Decl. ¶ 60 (22 TTABVUE 31), and she quoted from

multiple articles that expressly describe the CC Monogram Mark as famous or iconic,

Green Decl. ¶ 60f, i-j, n-s, u, w-x, including articles from the Associated Press

(September 6, 1991) (“The House of Chanel likes camellias, in addition to its famous

gild double-c logo.”) (24 TTABVUE 369), The Atlanta Constitution (October 24, 1993)

(Chanel black-and-white hightop shoes “boast leather insides and the famous CC logo

on the side.”) (24 TTABVUE 399), the Chicago Tribune (July 1, 1992) (“She says the

collections add to the Chanel cachet, which purchasers of ready-to-wear, perfume and

accessories feel they’re sharing when they buy anything bearing the famous double-

C logo.”) (24 TTABVUE 378), The Dallas Morning News (November 3, 1999) (at a

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Opposition No. 91229126

fashion show, “the famous double C appeared on colorful printed silks, and some

models wore glitter double C stick-on skin jewelry.”) (25 TTABVUE 11), and The

Houston Chronicle (March 30, 2000) (“Chanel cocktail dresses for spring have tiered

chiffon skirts printed with the famous double-C logo among the flowers.”) (25

TTABVUE 21). These articles are probative of the exposure of the CC Monogram

Mark to the public, and the extent to which the public has been conditioned to regard

the CC Monogram Mark as famous, iconic, or recognizable. Makarczyk, 110 USPQ2d

at 2021.

The CC Monogram mark has also been exposed to the public through media

coverage of fashion shows at which the CC Monogram Mark has been worn by models

and otherwise displayed, Green Decl. ¶¶ 25-26, 63; Exs. 6-7, 47 (22 TTABVUE 11-12,

36; 26 TTABVUE 346-381, 655-755), references to the CC Monogram Mark in a

variety of fiction and non-fiction books, including The End of Fashion: The Mass

Marketing of The Clothing Business (1999) (referring to the CC Monogram Mark as

an “enduring marketing symbol” (26 TTABVUE 434) and Skeleton Key: A Gregor

Demarkian Novel (2001) (character notes how he “recognized the double-C bit on the

handle” as Chanel (26 TTABVUE 442), Green Decl. ¶ 65a-u; Exs. 50-70 (22

TTABVUE 37-40; 26 TTABVUE 426-517), and placement of products displaying the

mark in episodes of the television series Sex and the City, Will & Grace, and The

Nanny that aired prior to 2002. Green Decl. ¶ 71; Ex. 75 (22 TTABVUE 41; 27

TTABVUE 3-33).28

Opposer also cites the Women’s Wear Daily 100 brand recognition survey, Green Decl. ¶ 61;
28

Ex. 38 (22 TTABVUE 34; 26 TTABVUE 3-137), and other general or industry-specific brand

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Opposition No. 91229126

Opposer’s and retailers’ extensive advertising of goods bearing the CC Monogram

Mark in the print and electronic media over many decades, and the United States

public’s extensive exposure to the mark through its association with celebrities, its

appearance and discussion in various media, and in the other manners shown by the

record, support a finding that the mark is famous.

(ii) Sales of Goods Bearing the CC Monogram Mark

The CC Monogram Mark has been used prominently on clothing, footwear, leather

goods, and a full range of beauty and fragrance products in the United States. Green

Decl. ¶ 20 (22 TTABVUE 8-9). Ms. Green estimated that the CC Monogram Mark

appears on 80-85% of Opposer’s ready-to-wear fashion products, 90-95% of Opposer’s

leather accessories, 85-90% of Opposer’s footwear, 95-100% of Opposer’s costume

jewelry, 80% of Opposer’s eyewear, and 95% of Opposer’s fragrance and beauty

products. Green Decl. ¶ 30 (22 TTABVUE 13-14).

Goods bearing the CC Monogram Mark have long been sold to both women and

men and to various demographic segments of the American public. Green Decl. ¶¶ 34-

36 (22 TTABVUE 15-16). They have been distributed throughout the United States

recognition surveys or brand rankings, Green Decl. ¶ 62; Exs. 39-46 (22 TTABVUE 34-36; 26
TTABVUE 138-344), as evidence of fame. The Board relied on this evidence in Makarczyk to
find the CHANEL word mark to be famous, 110 USPQ2d at 2021, and Ms. Green claimed
that “[b]ecause the CC Monogram appears on the vast majority of Chanel products, the fame
of the CC Monogram Mark is implicit in these brand recognition surveys.” Green Decl. ¶ 61
(22 TTABVUE 34). We disagree. The entries for Chanel in the Women’s Wear Daily 100 brand
recognition surveys do not depict or discuss the CC Monogram Mark. The survey reports
characterize their results as identifying “the winners of the name game,” 26 TTABVUE 88,
and the “most recognizable names in fashion.” 26 TTABVUE 96, 99, and they showed brand
names, not accompanying logos, to respondents, e.g., 26 TTABVUE 96. The other brand
recognition surveys and rankings similarly do not reflect recognition of the CC Monogram
Mark, as they do not focus on the mark per se. 26 TTABVUE 186.

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Opposition No. 91229126

through Opposer’s own boutiques, through national and local retailers, and, since

2000, through Opposer’s website. Green Decl. ¶ 37 (22 TTABVUE 16).

Prior to 2002, Opposer opened at least 10 boutiques in major cities in the United

States. Green Decl. ¶ 38 (22 TTABVUE 16). All of them prominently displayed the

CC Monogram Mark. Green Decl. ¶¶ 38-39; Ex. 17 (22 TTABVUE 16-17; 23

TTABVUE 34-38). A photograph of the interior of a pre-2002 boutique is reproduced

below.

23 TTABVUE 35.

Fragrances and beauty products bearing the CC Monogram Mark have been sold

through retailers since the late 1920s, and fashion products bearing the mark have

been sold through retailers since the late 1970s. Green Decl. ¶ 40 (22 TTABVUE 17).

By the end of 1998, the fashion products were sold through nearly 50 retailers and

the fragrance and beauty products, as well as eyewear bearing the mark, were sold

through over 1,000 retailers. Green Decl. ¶ 40 (22 TTABVUE 17). Retailers have

historically prominently displayed the CC Monogram Mark, including in dedicated

Chanel areas of the stores. Green Decl. ¶ 40 (22 TTABVUE 17).

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Opposition No. 91229126

Opposer has also displayed the CC Monogram Mark on its website since 2000.

Green Decl. ¶ 41; Ex. 19 (22 TTABVUE 17-18; 23 TTABVUE 78-104). An archived

screenshot from 2001 is reproduced below.

23 TTABVUE 81.

The CC Monogram Mark has been used in the United States on nearly every

compact, bottle, tube, or other container for Opposer’s cosmetics for over 90 years,

Green Decl. ¶¶ 14-15, 22-23; Exs. 1, 5 (22 TTABVUE 6-7, 9-10, 45-46, 606-654), on

bags, wallets, and other leather accessories for over 60 years, Green Decl. ¶ 17 (22

TTABVUE 7-8), and on clothing for over 50 years. Green Decl. ¶ 16 (22 TTABVUE 7).

The CC Monogram Mark has been used on or in connection with these goods in a

variety of ways, including on hangtags and labels for clothing, scarves, headwear,

gloves, and hosiery, through embossment on products such as bags and wallets, as a

closure device or a zipper pull on bags and luggage, as a design element for products

such as costume jewelry, sunglasses, handbags, belts, shoes, and gloves, and on

external and internal packaging for beauty products. Green Decl. ¶¶ 21-23; Ex. 4 (22

TTABVUE 9-10, 52-605).

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Opposition No. 91229126

The record shows that the CC Monogram Mark is often the focal point of Opposer’s

clothing, leather goods, and accessories. One example is depicted below.

22 TTABVUE 269.

The record further shows that the CC Monogram Mark is prominently displayed

on virtually all of Opposer’s beauty and fragrance products. A few examples are

depicted below.

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Opposition No. 91229126

22 TTABVUE 607, 611, 642, 646.

The CC Monogram Mark has appeared on Opposer’s flagship Chanel No. 5

products since 1921, Green Decl. ¶ 14; Ex. 1 (22 TTABVUE 6-7, 45-46), and on other

beauty products since 1924, Green Decl. ¶ 15; Ex. 2 (22 TTABVUE 7, 47-48), and the

Patent and Trademark Office issued Opposer’s Registration No. 195359 of the CC

Monogram Mark for face powder, perfume, eau de cologne, toilet water, lipstick, and

rouge in February 1925. Looney Dec. ¶ 5; Ex. 76 (28 TTABVUE 3-4, 17-26). Opposer

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Opposition No. 91229126

has used the CC Monogram Mark on women’s beauty products such as foundation,

concealer, blush, bronzers, eyeshadow, mascara, eyeliner, brow pencils, lipstick, lip

gloss, lip liner, nail polish, moisturizer, cleaner, serum, and masks, as well as

fragrances such as Chanel No. 5, Coco Mademoiselle, and Chance, which have

consistently been among the best-selling fragrances in the United States. Green Decl.

¶ 22 (22 TTABVUE 9-10). Opposer has also used the CC Monogram Mark on men’s

fragrance and personal care products, such as shower gel, shave gel, after shave

lotion, and deodorants. Green Decl. ¶ 22 (22 TTABVUE 9-10). Opposer was among

the leading sellers of beauty and fragrance products in the United States during the

1990s, Green Decl. ¶ 32; Exs. 8-9 (22 TTABVUE 14; 23 TTABVUE 3-8), and by 2002,

Opposer’s fragrances bearing the CC Monogram Mark enjoyed a 7% share of the

women’s fragrance market in the United States, and a 2% share of the men’s

fragrance market in the United States. Green Decl. ¶ 22 (22 TTABVUE 10).

Since the 1920s, many millions of units of various Chanel No. 5 products and other

beauty products bearing the CC Monogram Mark have been sold in the United States,

and those sales have generated many billions of dollars in revenues. Green Decl. ¶¶

14-15 (22 TTABVUE 6-7). In addition, millions of units of apparel and accessories

bearing the CC Monogram Mark have been sold in the United States, and those sales

have also generated many billions of dollars in revenues. Green Decl. ¶ 17 (22

TTABVUE 7-8). Ms. Green estimated that Opposer had sold many millions of product

units bearing the CC Monogram Mark in the United States since the 1920s, yielding

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Opposition No. 91229126

revenues in the billions of dollars. Green Decl. ¶¶ 28-29 (22 TTABVUE 12-13).29 The

total unit and revenue figures for sales of products bearing the CC Monogram Mark

through 2002 are confidential but very impressive. Green Decl. ¶¶ 29-30 (22

TTABVUE 13-14).

The extensive sales of a wide variety of goods bearing the CC Monogram Mark to

various segments of the American public through multiple channels of distribution

over many decades support a finding that the mark is famous. See, e.g., N.Y. Yankees

P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1503-04 (TTAB 2015).

(iii) Extent of Actual Recognition of the CC Monogram
Mark

Opposer offered no probative evidence regarding the extent of actual recognition

of the CC Monogram Mark,30 and this factor is neutral in our analysis of fame.

(iv) Registration of the Mark

Opposer owns 12 registrations of the CC Monogram Mark on the Principal

Register that issued prior to 2002. As discussed above, they cover a wide variety of

goods, including clothing, leather goods, fragrance and beauty products, and

accessories, as well as retail store services in the field of ready-to-wear clothing. The

29Ms. Green explained that she was required to estimate unit sales because Opposer rotated
goods offered in its collections each year. Green Decl. ¶ 28 (22 TTABVUE 12).
30 Ms. Green testified that “consumers view the CC Monogram Mark as a visual
representation of the Chanel brand,” citing a “recent survey” that purportedly showed that a
very high percentage of women associate the CC Monogram Mark only with Opposer. Green
Decl. ¶ 27 (22 TTABVUE 12). The survey was not made of record and appears in any event
to have been conducted long after 2002, and we have given no weight to Ms. Green’s
testimony about it. Cf. Coach, 101 USPQ2d at 1726 (brand awareness study not supported
by a witness with first-hand knowledge and conducted several years after filing date of
opposed application appropriately given limited weight).

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Opposition No. 91229126

oldest of these registrations issued in 1925, and eight of them have been on the

Principal Register for more than 30 years.

“[W]hile proof of registration is not conclusive evidence of fame,” Coach, 101

USPQ2d at 1725, the number and scope of Opposer’s registrations support a finding

that the CC Monogram Mark had become famous by 2002. Cf. N.Y. Yankees, 114

USPQ2d at 1504 (five registrations of New York Yankees’ “Top Hat” design mark for

baseball-related services and collateral goods that issued between 1976 and 2007

supported fame of mark as of 2008); McDonald’s Corp. v. McSweet, LLC, 112 USPQ2d

1268, 1287-89 (TTAB 2014) (eight registrations of “Mc-” formative marks for

restaurant services and food products that issued between 1977 and 2007 supported

fame of “Mc-” family of marks prior to 1990).

4. Summary

We find, on the basis of the record as a whole, that Opposer has carried its burden

of showing that the CC Monogram Mark had become famous in the United States

within the meaning of Section 43(c)(2)(A) of the Trademark Act prior to Applicant’s

established first use of its mark in 2002. The extensive advertising, promotion, and

exposure of the mark to the general public, the extensive sales and widespread

distribution of a variety of goods bearing the mark over many decades, and the

longtime registration of the mark for a variety of goods and services, persuade us that

the CC 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 its pleaded registrations, and is therefore famous for

dilution purposes.” Makarczyk, 110 USPQ2d at 2022. We further find that the CC

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Opposition No. 91229126

Monogram Mark is also distinctive, either inherently or through the acquisition of

distinctiveness, id., for the reasons discussed in detail below in connection with our

analysis of the degree of distinctiveness of the mark.

C. Applicant’s Use of Its Mark in Commerce

“The second dilution element Opposer must establish is that Applicant is using its

allegedly diluting mark in commerce.” N.Y. Yankees, 114 USPQ2d at 1505. Opposer

may prove Applicant’s use in commerce “by direct evidence or may rely on the

application filing date as the date of constructive use.” Makarczyk, 110 USPQ2d at

2023. Opposer made of record Applicant’s admissions of its use of its mark in

commerce, 30 TTABVUE 9-10, and thus has established this element of Opposer’s

claim.

D. Likelihood of Dilution by Blurring

The Trademark Act sets forth a non-exclusive list of factors to be considered in

making the determination of likelihood of dilution by blurring:

i. the degree of similarity between the mark or trade name and the famous

mark;

ii. the degree of inherent or acquired distinctiveness of the famous mark;

iii. the extent to which the owner of the famous mark is engaging in

substantially exclusive use of the mark;

iv. the degree of recognition of the famous mark;

v. whether the user of the mark or trade name intended to create an

association with the famous mark; and

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Opposition No. 91229126

vi. any actual association between the mark or trade name and the famous

mark.

15 U.S.C. § 43(c)(2)(B)(i-vi).

1. The Degree of Similarity Between the Marks

Under the Trademark Dilution Revision Act of 2006, we must determine “‘whether

the two involved marks are sufficiently similar to trigger consumers to conjure up a

famous mark when confronted with the second mark.’” N.Y. Yankees, 114 USPQ2d at

1506 (quoting Nat’l Pork Bd. v. Supreme Lobster & Seafood Co., 96 USPQ2d 1479,

1497 (TTAB 2010)). “[F]or purposes of this element, it is sufficient that the [marks]

be highly similar.” Research in Motion Ltd. v. Defining Presence Mktg. Grp. Inc., 102

USPQ2d 1187, 1197 (TTAB 2012).

In determining similarity for purposes of dilution by blurring, we are guided by

the analysis that we apply to the issue of the similarity of marks for purposes of

likelihood of confusion under Section 2(d) of the Trademark Act:

While we are not conducting a Section 2(d) likelihood of
confusion analysis under this factor for dilution by
blurring, we still consider the degree of similarity or
dissimilarity of the marks in their entireties as to
appearance, connotation, and commercial impression.…
We consider the marks in terms of whether they are
sufficiently similar in their overall commercial impressions
that the required association exists.

N.Y. Yankees, 114 USPQ2d at 1506 (citations omitted).

We do not base our determination of similarity on a side-by-side comparison of the

marks, Nike Inc. v. Maher, 100 USPQ2d 1018, 1030 (TTAB 2011), but for ease of

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Opposition No. 91229126

reference in following our analysis, we reproduce below Applicant’s mark on the left,

and one of the several variations of the CC Monogram Mark on the right:

The overall visual similarities between the marks are immediately apparent, and

striking. Both marks consist of interlocking, back-to-back letters “C,” both display the

letters in roughly the same proportion to one another, both have a central space

between the letters C, and in both, the back-to-back letters appear to be linked to, or

intertwined with, one another. We acknowledge differences between the marks

resulting from different font styles, the existence of breaks in Applicant’s mark in the

letters where they intersect, different manners of display of the top end of the letter

C, and the presence of a square border in Applicant’s mark,31 but they are

insignificant because the relevant inquiry is not whether the differences could be

discerned in a side-by-side comparison, Nike, 100 USPQ2d at 1030, but rather

whether someone “encountering Applicant’s mark will immediately be reminded of

Opposer’s famous … design mark and associate the two.” N.Y. Yankees, 114 USPQ2d

at 1507.

31The border serves only to frame the back-to-back letters “C,” which are what create the
commercial impression of Applicant’s mark. In any event, the CC Monogram Mark is also
bordered by a square in one of its unregistered variations.

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Opposition No. 91229126

The marks are highly similar in appearance and commercial impression, and

“when considered in their entireties, we find 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 to associate the two marks. Id. (finding that the parties’

“top hat” marks were sufficiently similar for dilution by blurring to be likely

notwithstanding “significant differences between the marks” as shown below)

Cf. Nike, 100 USPQ2d at 1030 (JUST JESU IT sufficiently similar to JUST DO IT to

support finding of dilution by blurring). This factor supports a finding of dilution by

blurring.

2. The Degree of Inherent or Acquired Distinctiveness of the CC
Monogram Mark

“‘This factor requires us to analyze how distinctive or ‘unique’ the mark is to the

public. The inquiry is made even when it is undisputed that opposer’s mark is

registered on the Principal Register.’” Makarczyk, 110 USPQ2d at 2025 (quoting

NASDAQ Stock Market Inc. v. Antartica S.r.l., 69 USPQ2d 1718, 1735 (TTAB 2003)).

“The more inherently distinctive and memorable the mark, the more likely it is to be

blurred by the use of other identical or similar marks. The more descriptive the mark,

the less likely it is to be blurred by the use of identical or similar marks.” Id.

(quotation omitted).

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Opposition No. 91229126

Opposer’s CC Monogram Mark is shown in multiple registrations on the Principal

Register, all of which issued without a requirement that Opposer show acquired

distinctiveness under Section 2(f) of the Trademark Act. “A mark that is registered

on the Principal Register is entitled to all Section 7(b) presumptions including the

presumption that the mark is distinctive and moreover, in the absence of a Section

2(f) claim in the registration, that the mark is inherently distinctive for the goods.”

Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); see also

Nat’l Pork Bd., 96 USPQ2d at 1497.

As a factual matter, the CC Monogram Mark is a fanciful depiction of two back-

to-back interlocking letters “C.” The letters themselves do not describe or suggest any

characteristics of the goods and services with which they are is used, and we agree

with Opposer that the fact that the letters are derived from the initials of Opposer’s

founder Coco Chanel “also does not diminish the inherent distinctiveness of the

mark,” 15 TTABVUE 24, because in their fanciful depiction in Opposer’s mark, the

letters are inherently distinctive. The evidence of fame of the CC Monogram Mark

discussed above also “more than sufficiently establishes that [O]pposer’s [CC

Monogram Mark] has acquired a high degree of distinctiveness among consumers.”

Makarczyk, 110 USPQ2d at 2025. This factor supports a finding of dilution by

blurring.

3. The Extent to Which Opposer is Engaging in Substantially
Exclusive Use of the CC Monogram Mark

There is no requirement that the use of a famous mark be absolutely exclusive for

its owner to prevail on a dilution by blurring claim. Evidence of the substantially

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Opposition No. 91229126

exclusive use of a famous mark is probative of a likelihood that the mark will be

diluted by blurring through use of the same or a similar mark. See, e.g., McDonald’s,

112 USPQ2d at 1289-90.

Opposer made of record evidence that it has aggressively and successfully enforced

its rights in the CC Monogram Mark in the United States. As discussed above in our

analysis of fame, Opposer has filed numerous lawsuits against misuses of the CC

Monogram Mark, and has obtained preliminary and permanent injunctive relief

against many of them. Looney Decl. ¶ 8; Ex. 80 (28 TTABVUE 4, 221-228, 241-320,

326-345, 359-377, 414-438). Opposer has filed numerous oppositions and cancellation

proceedings “against marks that were confusingly similar to or dilutive of the CC

Monogram Mark,” Looney Decl. ¶ 9; Ex. 78 (28 TTABVUE 4-5, 205-211), and Ms.

Looney testified that in “nearly all of the proceedings, [Opposer] prevailed and

registration was refused or canceled, or the defendant agreed to amend its application

to distinguish it from [Opposer’s] CC Monogram Mark.” Looney Decl. ¶ 11 (28

TTABVUE 5). Ms. Looney testified that “during the period from 2002 to the present,

at least 28 applications for marks that were confusingly similar to or dilutive of the

CC Monogram Mark were abandoned after [Opposer] filed” requests to extend its

time to oppose. Looney Decl. ¶ 11; Ex. 79 (28 TTABVUE 5, 214-217). Finally, Ms.

Looney testified that since 1977, Opposer has sent more than 10,000 cease-and-desist

letters regarding alleged misuses of the CC Monogram Mark. Looney Decl. ¶ 10 (28

TTABVUE 5). Her uncontroverted testimony regarding Opposer’s enforcement efforts

– 35 –
Opposition No. 91229126

is credible. See Makarczyk, 110 USPQ2d at 2025-26 (discussing Opposer’s policing of

its CHANEL word mark).

Ms. Looney testified that as a result of Opposer’s enforcement efforts, “the federal

registry is essentially free of marks that copy [Opposer’s] CC Monogram Mark,” and

that she was not “aware of any other national brand that uses two back-to-back,

interlocking letter Cs in its logo.” Looney Decl. ¶ 13 (28 TTABVUE 6). Her claim is

supported by the record, which is devoid of evidence of any unconsented third-party

uses or registrations of monogram marks comprising interlocking “C” letters.32 We

find that Opposer has made substantially exclusive use of the CC Monogram Mark

in the United States. This factor supports a finding of dilution by blurring. See

Makarczyk, 110 USPQ2d at 2025-26 (discussing Opposer’s policing of its CHANEL

word mark and finding substantially exclusive use of the CHANEL word mark on the

basis of Opposer’s enforcement efforts and the lack of evidence of unconsented third-

party uses).

32 Opposer made of record one of Applicant’s interrogatory answers in which Applicant
referred to “the use of the CC letters in an interlocking manner similar to the Chanel CC
monogram registered under Serial No. 86680027 filed on July 1, 2015 in class 042 and 050.”
30 TTABVUE 8. Opposer states that Applicant was referring to “an existing federal
registration for a CC design mark owned by J&J Brothers Holdings, LLC for duvet covers,
household items, mattress pads, sheet sets, and towels.” 15 TTABVUE 25. The referenced
registration is not in the record, but the existence of only one allegedly similar registration
would not undercut Opposer’s showing of substantially exclusive use of the CC Monogram
Mark. “Third-party registrations have little probative value by themselves because they tell
us nothing about whether or not the marks are actually being used or the manner of any such
use,” and “[w]ithout evidence as to how, or whether, the third-party marks have been used,
we cannot assess whether any such use has been so widespread as to have had an impact on
consumer perceptions.” Nike, 100 USPQ2d at 1028.

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Opposition No. 91229126

4. The Degree of Recognition of the CC Monogram Mark

Under this factor, we must “determine the level of fame acquired by the famous

mark” by applying a “sliding scale to determine the extent of that protection (i.e., the

more famous the mark, the more likely there will be an association between the

famous mark and defendant’s mark).” 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715,

1729-30 (TTAB 2007) (finding that this factor was neutral because while BIG GULP

was “a famous mark for dilution purposes, there is insufficient evidence to

demonstrate that BIG GULP has acquired an extraordinary degree of recognition

relative to other famous marks.”).

Opposer argues that its evidence of fame “also establishes that the CC Monogram

enjoys a high degree of recognition,” citing Makarczyk, N.Y. Yankees, and Nike, 15

TTABVUE 26, but “we do not view the record to contain sufficient evidence from

which we could infer the degree of recognition of” the CC Monogram Mark. N.Y.

Yankees, 114 USPQ2d at 1507. On the threshold issue of the fame of the CHANEL

word mark in Makarczyk, the Board found “particularly persuasive” Opposer’s

internal consumer recognition surveys showing that the CHANEL word mark is

“extremely well known and enjoys an unusually high degree of unaided and aided

recognition.” 110 USPQ2d at 2022. The Board relied in part upon these surveys to

support its finding on the degree of recognition factor. Id. at 2026. The Board

similarly relied upon third-party unaided awareness surveys in finding a high degree

of recognition of the JUST DO IT mark in Nike. 100 USPQ2d at 1028. Finally, the

Board noted the absence of any direct evidence “regarding the degree of consumer

recognition of Opposer’s top hat design mark” in finding this factor to be neutral in

– 37 –
Opposition No. 91229126

N.Y. Yankees. 114 USPQ2d at 1507. In the absence of survey or other recognition

evidence here, we cannot find that the CC Monogram Mark “has acquired an

extraordinary degree of recognition relative to other famous marks,” 7-Eleven, 83

USPQ2d at 1730, and we find that this factor is neutral.

5. Applicant’s Intent to Create an Association with the CC
Monogram Mark

Applicant stipulated that it “was aware of Opposer’s CC Monogram prior to its

adoption of the mark opposed,” 7 TTABVUE 3, and admitted familiarity with Opposer

and the CC Monogram Mark through friends, relatives, clients, and publications. 30

TTABVUE 7 (Response to Interrogatory No. 4). It is self-evident, as Opposer

concedes, that Applicant’s “mark was chosen to reflect the initials of Applicant’s

business,” Looney Decl. ¶ 18 (28 TTABVUE 10), but the record is devoid of any

explanation of why Applicant depicted those initials in a manner that we have found

to be highly similar in appearance to the CC Monogram Mark.33 In the absence of

direct evidence of copying, on this record we cannot infer an intent to associate

Applicant’s mark with the CC Monogram Mark, and we find that this factor is

neutral.

33 In Applicant’s response to one of Opposer’s interrogatories, Applicant stated that the “use
of a reversed capital letter C in an interlocking position with the regular letter C is one of the
next natural alternate way of two letter C’s in a logo or trade/service mark other than that of
showing them in the regular typesetting position.” 30 TTABVUE 5-6 (Response to
Interrogatory No. 2). Applicant’s claim that this depiction of the letters in its mark is a
“natural alternate way” of combining two Cs is belied by the record, which shows no such
depiction of the letters by anyone else other than Opposer.

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Opposition No. 91229126

6. Actual Association

Opposer argues that the visual similarity of the marks “was enough to cause one

of Applicant’s former colleagues to remark that the Camacho mark is similar to the

CC Monogram,” 15 TTABVUE 21, and that this “supports a finding of actual

association between the parties’ marks.” 15 TTABVUE 21 n.6 (citing Gucci Am. Inc.

v. Guess? Inc., 858 F. Supp. 2d 207 (S.D.N.Y. 2012) (unattributed comments on

website comparing subject marks, while weak evidence of actual association, caused

this factor to favor the plaintiff slightly)). It is not clear from the cited discovery

response whether the unidentified individual who commented on the similarity of the

marks lives in the United States, 30 TTABVUE 8, and we do not find the response

probative of an actual association between the marks. We find this factor to be

neutral.

7. Summary

“Dilution by blurring occurs when a substantial percentage of consumers, on

seeing the junior party’s mark on its [services], are immediately reminded of the

famous mark and associate the junior party’s mark with the owner of the famous

mark, even if they do not believe that the [services] emanate from the famous mark’s

owner.” N.Y. Yankees, 114 USPQ2d at 509. On balance, the evidence weighs in favor

of a finding of a likelihood of dilution. Opposer’s mark is famous and highly

distinctive, the marks are highly similar, and the record shows that Opposer has

enjoyed substantially exclusive use of, and extensive media and other exposure of, its

CC Monogram Mark in the United States for decades. The other factors are neutral.

A substantial percentage of consumers of Applicant’s services who are exposed to

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Opposition No. 91229126

Applicant’s mark are likely to be immediately reminded of Opposer’s famous mark

and to associate Applicant’s mark with Opposer. We find, on the basis of the record

as a whole, that Opposer has shown that Applicant’s mark is likely to cause Opposer

to suffer an impairment of the distinctiveness of its famous CC Monogram Mark, and

that dilution by blurring is thus likely. See Nike, 100 USPQ2d at 1031 (balancing

factors similarly in concluding that dilution by blurring was likely).

Decision: The opposition is sustained.

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