Telfar is amending a pending trademark application for registration for its TC logo in the wake of a clash with Puig-owned beauty brand Charlotte Tilbury. In a notice of express abandonment (for certain classes of goods) that it filed on Tuesday, counsel for New York-based Telfar LLC alerted the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB”) that it is looking to abandon its application for a mark that consists of the letter “T” with the letter “C” surrounding the letter “T” – a nod to founder Telfar Clemens’ initials – for Classes 3 (Colognes, perfumes and cosmetics) and 9 (eyewear).
The filing comes amid an opposition battle that Charlotte Tilbury initiated in August 2022 in response to Telfar’s quest to register its TC mark across an array of goods. (Telfar filed the application at issue in June 2021, pointing to its use of the logo on its hot-selling handbags, as well as apparel, footwear, and accessories, and citing its intent to use the logo on goods in Classes 3 and 9.) According to the notice of opposition that it lodged with the TTAB last summer, Charlotte Tilbury – the beauty brand that well-known British makeup artist Charlotte Tilbury launched in 2013 – argued that it would be damaged if Telfar’s mark was registered in Class 3, as the logo is “confusingly similar” to its own CT logo.
“There is no issue as to priority,” counsel for Tilbury argued, as “the filing dates, first use dates, and registration dates of Charlotte Tilbury’s registrations for the Charlotte Tilbury CT marks are before the filing date listed in [Telfar’s] application.” Moreover, as a result of its “extensive use, promotion and success of the Charlotte Tilbury CT marks” – since at least as early as September 2014, the public has come to “readily associate the Charlotte Tilbury CT marks with Charlotte Tilbury,” and the registration of Telfar’s lookalike logo would conflict with that.
Telfar pushed back in its answer in October 2022, denying Tilbury’s claim that the CT mark is “strong,” and urging that TTAB to dismiss the opposition with prejudice and permit its application to move ahead in a registration process. Not long after Telfar filed its answer, the parties alerted the TTAB that were actively engaged in negotiations to settle the matter amongst themselves, and it appears that they have reached a resolution that will see Telfar drop Classes 3 and 9 from its application. The application will now proceed with the other Classes of goods/services – Classes 14 (jewelry), 18 (handbags and luggage), and 25 (garments) – still in place.
THE BIGGER PICTURE: The move by Telfar to drop Classes 3 and 9 from its application does not feel like a major loss at this time since the brand does not seem to be using its TC logo on goods in those classes. However, the opposition, itself – and the outcome – may suggest that the brand will be up against a new trademark fight should it opt to start offering up TC-branded fragrances/cosmetics and/or eyewear at some later date. Given that fashion brands are in the habit of parlaying demand for their apparel and accessories into often-lucrative fragrance and/or eyewear licensing deals, this could signal a potential clash in the making for the future; although, it is worth noting that Tilbury is not actively offering up eyewear under its own name or CT logo, which could make for an easy (hypothetical) win for Telfar on that front, at least. For classes of goods/services that inch closer to beauty products, which is what Tilbury is known for, that would certainly be quite a bit more difficult.
UPDATED (Jun. 21, 2023): Charlotte Tilbury alerted the TTAB that it “consents to Telfar LLC’s express abandonment of the trademark application for Classes 3 and 9 that is the subject of this proceeding.”
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