Wednesday, December 13, 2023

VOGUE VEGAN for Cosmetics Dilutes Famous VOGUE Marks, Says TTAB

The Board sustained an opposition to VOGUE VEGAN for cosmetics containing no animal products or by-products, and granted a petition for cancellation of a registration for that same mark for "personal shopping for others who want goods containing no animal products or by-products," on the ground that the mark dilutes the famous VOGUE and VOGUE-formative marks for fashion magazines and related services. Plaintiff failed to prove its claims of abandonment and fraud. The Board declined to reach plaintiff's likelihood of confusion claim. Advance Magazine Publishers Inc. v. Brenda Joan Hollifield, Opposition No. 91247611 and Cancellation No. 92072531 (November 30, 2023) [not precedential] (Opinion by Judge Peter W. Cataldo).

The Board found the VOGUE marks to be "somewhat suggestive of the subject matter," since "vogue" is defined as "something in fashion, as at a particular time." However, the evidence demonstrated "extremely high commercial strength of the mark VOGUE for magazines and online content in the field of fashion and even more generally in the field of fashion." For example, the VOGUE mark has enjoyed "broad and sustained consumer exposure" for more than 100 years. The magazine has about 8.3 million readers and plaintiff's YouTube channel has 11 million subscribers. "By any and all measures, the evidence establishes that VOGUE is a famous mark, and entitled to protection against dilution under 15 U.S.C. § 1125(c)." [What about the VOGUE-formative marks? - ed.].

In comparing the marks, the Board observed that "[i]n the dilution context, 'the similarity between the famous mark and the allegedly blurring mark need not be substantial in order for the dilution by blurring claim to succeed.'" The Board must determine "whether Defendant’s VOGUE VEGAN mark is sufficiently similar to Plaintiff’s VOGUE mark as to 'trigger consumers to conjure up' Plaintiff’s mark." Nike, 100 USPQ2d at 1030 (quoting Nat’l Pork Bd., 96 USPQ2d at 1497).

[T]he marks are similar, with Defendant’s mark appropriating the entirety of Plaintiff's mark and adding the descriptive, disclaimed term VEGAN to distinguish them. Because Defendant’s mark includes the entirety of Plaintiff’s mark the marks look similar. *** They also sound similar. *** Although the following term VEGAN in Defendant's mark creates a difference in meaning and commercial impression, indicating an absence of animal product or by-product, this could be understood as a variation on Plaintiff's VOGUE mark.

Defendant's evidence showed third-party use and registration of VOGUE-formative marks for a variety of goods and services, but the Board observed that "[t]here is no record evidence demonstrating use of VOGUE for goods or services similar or related to Plaintiff’s goods and services." [In the dilution context, why do the third-party uses have to be for similar or related goods and services? - ed.].

With the exception of intent and evidence of actual association [no evidence - ed.], the dilution factors favor finding that there is a likelihood of dilution. Therefore, we find that Defendant's registration of VOGUE VEGAN would impair the distinctiveness of Plaintiff's VOGUE marks and is likely to dilute the distinctive quality of VOGUE.

And so, the Board sustained the opposition on the ground of dilution-by-blurring.

Read comments and post your comment here.

TTABlogger comment: The Board calls plaintiff's registrations "incontestable," but we know there is no such thing as an incontestable registration. The opinion is rather vague as to the fame of the VOGUE-formative marks. BTW, it seems that plaintiff's likelihood of confusion claim as to defendant's services was pretty weak, so maybe that's why the Board went the dilution route.

Text Copyright John L. Welch 2023.


At 12:28 PM, Blogger Tom McCarthy said...

It's clear that the TTAB just LOVES the dilution law as a way to get around difficulties in analyzing likelihood of confusion.


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