One thing we know for sure: high fashion houses don’t like when others take advantage of their trademarks. Luxury fashion brands, in particular, have spent many, many decades, and even centuries building esteem and goodwill around their names (and thus, their trademarks). In order for them to remain as valuable assets (because you’re not going to be buying a bag with the Gucci interlocking “G” print all over it if you perceive it to be a brand of poor quality and low esteem), they must be policed. The use of such marks by unauthorized third parties often results in consumer confusion and/or such use that may impair the strength of the famous marks by diluting them. We also know that this is most commonly done for the benefit of positive association with a well-known mark and its prestige, and thus, for the financial benefit of the unauthorized third party. So, with this in mind, Brooklyn Balloon Company, which has taken to putting Louis Vuitton’s Toile Monogram, Céline’s trademarked name, Yves Saint Laurent’s logo, and Chanel’s double “C” mark on purse-shaped balloons, is an interesting case.
If you are up on trademark law, you know that you can typically only successfully sue for infringement when someone else uses your mark on the same class of goods in which you deal. This is because consumer confusion is the key inquiry in a trademark infringement action and the further you get from the classes of goods of the trademark holder, the less confused consumers are likely to be. (Note: Classes are separated by type of goods/services, such as clothes or shoes or electronics or food or entertainment services, etc.)
However, under the doctrine of dilution, a trademark owner’s remedies are expanded a bit. Generally, trademark dilution is the weakening of a famous mark's ability to identify and distinguish goods or services, regardless of whether there is competition in the marketplace or if there is a likelihood of confusion. What does this mean in plain English? It means that with a claim of trademark dilution, a trademark holder may sue another party if it uses an identical or virtually identical mark on or in connection with goods and/or services that may be completely different from and unrelated to the trademark owner’s goods and/ or services.
Here’s an example. Assume a company that is NOT Paris-based design house Givenchy puts the Givenchy trademark on kitchen appliances or children’s toys. No one is likely to be confused into thinking that Givenchy is somehow connected to or is endorsing the toasters or the toys because Givenchy is in the business of making clothing and accessories and not appliances or toys. So, Givenchy wouldn’t have a very strong claim for trademark infringement. Givenchy would, however, have a claim for trademark dilution because its trademarked name is famous and Givenchy would certainly argue that its very valuable high fashion trademark was being weakened or watered down by slapping it on a number of other goods like microwaves.
Enter: Brooklyn Balloon Company (or BBC as we will refer to it) and its “luxury balloons,” which popped up on our radar recently thanks to the company’s participation in a Vogue model casting event during last month’s New York Fashion Week. Problematic is the fact that BBC is utilizing the protected trademarks and copyrights of a handful of high fashion houses. Some of the trademarks at issue: Louis Vuitton’s “LV” logo and Toile Monogram print, Saint Laurent’s “YSL” logo, the Céline name, the Chanel double “C” logo and each of the design houses’ names, which BBC is using in its product descriptions and captions on social media. The copyrights at play: The individual flower designs in the Louis Vuitton Toile Monogram print (which are protected by trademark AND copyright law) and the Takashi Murakami flower design which has appeared in Murakami’s art and his long-standing collaboration with Louis Vuitton.
It is probably a stretch to say that anyone would be confused into thinking a helium balloon in the shape of a generic purse with the Céline trademark on it is a product of the Paris-based design house, but as we noted above, consumer confusion is not required for a claim of trademark dilution. In fact, the elements of a dilution claim are likely met because Céline (and the other design houses) is the owner of an unusually strong or well-known trademark; the mark has acquired distinctiveness (aka - has secondary meaning in the minds of the consuming public), and the diluting acts in question are likely to result in blurring (aka - a weakening of the distinctiveness of a famous mark by using it on unrelated goods/services).
Note: Filing a lawsuit on grounds of trademark dilution does not preclude the design houses from also claiming trademark infringement, as well. And actually, there is a chance that they may be successful on infringement claims if we consider a few things. First, BBC is using the names of the design houses in its product descriptions and captions on social media. For example, “Happy birthday Sahar! #FendiMonster” or “Louis Vuitton Speedy 25 Balloon” or “Céline bag!” This may lead consumers to believe BBC is in some way associated, affiliated or connected with the design houses. The company is using the actual brand names, after all. Second, the balloons aren’t your average, inexpensive ones. According to an Instagram post of BBC’s from last year, the Louis Vuitton Speedy 25 Balloon costs $950. That’s quite a bit less than an actual Speedy bag but it is quite an expensive balloon! The costly nature of the balloons very well may cause confusion for consumers. Lastly, BBC’s connection to the fashion industry (think: events with Vogue and Garage Magazine and clients that range from Rag & Bone to Isaac Mizrahi) may further confuse consumers into thinking that the balloon co. is connected to the design houses in some way.
Chances are, this won’t result in a lawsuit. It would probably be difficult for design houses to prove any significant damages amount as a result of BBC’s “luxury balloons” (and thus, would not make for a worthwhile lawsuit). But that’s not to say there will not be cease and desist letters going out – if they haven’t already.
As for what other brand may move to prevent BBC from using one of its trademarks on balloons: Eli Lilly & Co., which owns the intellectual property rights (including trademark rights) in its anti-depressant drug, Prozac. BBC has offered pill-shaped balloons with the word “Prozac” on them. As we know from the trademark lawsuit that pharmaceutical company, AbbVie, filed against Brian Lichtenberg and Los Angeles-based retailer Kitson in 2013 in connection with the unauthorized use of its Vicodan trademark on garments, drug companies tend to be protective of their marks – for both legal and ethical reasons.
More to come on this one, maybe …