Dior is back to facing off against an adult film star over her use of its trademark in her stage name. Following a brief suspension in the matter this summer, Dior has lodged a declaration with the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB”), in which Dior Chief Financial Officer Hien Tran Trung documents the likelihood that Dior will be damaged should Stephanie Hodge – who is professionally known as Gigi Dior – be able to register her name with the U.S. Patent and Trademark Office for use in connection with “entertainment services, namely, personal appearances by a porn star; Entertainment services, namely, providing a web site featuring non-downloadable adult-themed photographs and videos.”
Some Background: Hodge filed an application for register for “Gigi Dior” back in October 2021, which prompted an opposition from Dior. In the notice of opposition that it lodged with the TTAB in October 2022, Dior argued that as a result of “substantial sales and extensive advertising and promotion,” it has established “valuable goodwill” in its arsenal of Dior trademarks, which are “distinctive and famous.” In particular, Dior pointed to trademark registrations for its name for use in Classes 25, 14, and 18, as well as “common law trademark rights in the DIOR marks.”
Against this background, Dior has claimed that the value of its trademarks and the goodwill associated with them is at risk in light of the likelihood that consumers will “incorrectly believe” that the services offered under the Gigi Dior mark are “sponsored, approved, or emanate from [Dior]” or that the two parties are in some way connected/affiliated when they are not.
In its February 5 testimony filing, Dior echoes this sentiment, with Trung asserting that Dior is “likely to be damaged by the applicant’s registration and use of the GIGI DIOR mark,” as the GIGI DIOR mark “incorporates and misappropriates the DIOR trademark in its entirety.” Trung notes that Hodge’s application for and use of GIGI DIOR is “particularly problematic because Dior has for many years advertised and marketed its DIOR products through celebrities and entertainers, including actors.” In fact, he asserts that as part of its marketing and promotional activities for goods offered under the DIOR trademark, Dior has “established and cultivated formal relationships with celebrities and entertainers, including actors” – from formal brand ambassador engagements to other endorsements publicized through social media.
At the same time, Trung states that Dior “zealously protects its famous DIOR trademarks,” and in this vein, “cannot tolerate unauthorized uses of the DIOR mark, or similar marks, by third parties in a manner that is likely to cause confusion or is likely to dilute the distinctiveness of the famous DIOR mark.”
In addition to Hodge’s use of the DIOR mark as part of her name potentially causing confusion (the basis of its infringement claim), the LVMH-owned brand also argues that it gives rise to trademark dilution. Specifically, counsel for Dior asserts that Hodge “provid[ing] adult entertainment services by performing pornographic and adult-themed services under the name GIGI DIOR … is unacceptable to Dior because these services directly contradict the DIOR brand image of luxury and sophistication.” Such use of the DIOR mark by Hodge “will degrade the brand’s reputation among consumers and potential consumers; [and her] registration and use of a DIOR-formative trademark such as GIGI DIOR will dilute the distinctiveness of, and will tarnish, the DIOR trademark.”
TLDR: In addition to having the potential to cause confusion among consumers as to the nature/source of services provided under the GIGI DIOR name, Hodge’s registration and use of the GIGI DIOR trademark “will dilute the distinctiveness of the DIOR trademark and will tarnish the reputation and goodwill of Dior and the DIOR trademark,” Trung contends.
With the foregoing in mind, Trung claims that Dior “cannot permit [Hodge] to obtain a federal trademark or service mark registration, along with its presumptions of exclusive rights, in a DIOR-formative trademark, [as] such a registration would interfere with the exclusive rights Dior has carefully developed over many years in its DIOR trademark and could impede Dior’s ability to expand its trademark registration portfolio to additional service mark classes in the future.”
THE BIGGER PICTURE: While it is safe to say that Dior is likely not veering into adult films at any point in the near future, the opposition is, nonetheless, a potential demonstration of the increasingly wide net that brands are willing to cast to ensure that their rights are not encroached upon – even at the further end of the related goods arena/zone of natural expansion. In what might be one of less aggressive examples, adidas has been taking on Thom Browne over its use of a striped mark in light of the fashion brand’s expansion into the sportswear space – albeit relatively without much success if the outcome in a still-ongoing stateside trademark case and a recent EU opposition are any indication.
Arc’teryx’s bi-national efforts to block adidas’ registration and further use of the TERREX mark for use on goods/services in the realm of outdoor-specific clothing, footwear, and gear, as well as retail store services, similarly makes sense.
There are, of course, moves that may be a bit further afield. Zara’s successful effort several years ago to block the registration of a safari company’s mark, Zara Tanzania Adventures, in the European Union comes to mind. And just this month, news out of Ankara revealed that Hermès is taking on a 15-year-old bookstore via an opposition proceeding in Turkey over its use of the Birkin bag-maker’s name.
All the while, there have been a number of notable attempts by luxury brands to cover their bases on the technology front in a nod to companies looking to enjoy the greatest breadth when it comes to their rights in their well-known trademarks, especially amid larger tech-focused shifts in the fashion/luxury segment, which is seeing companies embrace various advances in e-commerce, web3, artificial intelligence, etc. Chanel, for example, (unsuccessfully) sought to prevent Chinese tech titan Huawei from registering a trademark with the European Union Intellectual Property Office for use on computer hardware and software programs on the basis that the mark is too similar to its famed double “C” logo. Meanwhile, Hermès is currently looking to prevent the registration of a third-party’s trademark application for HERMES DIGITAL TWIN, arguing that it will be damaged if the mark is registered with the U.S. Patent and Trademark Office thanks to its own web3 activities.
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