Tuesday, February 04, 2025

Porn Star Name GIGI DIOR Dilutes-by-Blurring Famous DIOR Mark

The Board sustained an opposition to registration of the mark GIGI DIOR for “Entertainment services, namely, personal appearances by a porn star; Entertainment services, namely, providing a web site featuring non-downloadable adult-themed photographs and videos," finding that the proposed mark is likely to dilute by blurring the famous mark DIOR for clothing, jewelry and bags. The Board declined to reach opposer's likelihood of confusion or dilution-by-tarnishment claims. This blog post will attempt to hit the highlights. Christian Dior Couture, S.A. v. Gramkey Investments, Modeling and Consulting, Opposition No. 91281244 (January 31, 2025) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

The name GIGI DIOR identifies adult entertainment actress Stephanie Hodge, the President and sole owner of Applicant Gramkey Investments. 

Opposer, in order to prove its dilution-by-blurring claim, was required to show that: (1) it owns a famous mark that is distinctive; (2) Applicant is using a mark in commerce that allegedly dilutes Opposer’s famous mark; (3) Applicant’s use of its mark began after Opposer’s became famous; and (4) Applicant’s use of its mark is likely to cause dilution by blurring.

Opposer substantial evidence established the fame of the DIOR mark. Opposer owns several decades-old registrations for DIOR. It demonstrated "decades of consistently large numbers of DIOR goods sold each year and high revenues based on those sales. Opposer documented "decades of promotional efforts through multiple outlets and featuring celebrities and high profile events" It has received media attention via articles describing its promotional relationships with celebrities. And opposer was "recently recognized for its brand strength by a third-party brand valuation study." The Board concluded that "DIOR is a household name, and for the purposes of dilution, a famous mark."

Applicant Gramkey claimed that the word DIOR is widely used, including in the adult entertainment industry, but it provided "zero evidence tying the Internet materials in the record to views by the public," and so the Board viewed those uses al "minor." "In short, while Applicant has collected many instances of webpages featuring the term 'Dior,' Applicant has failed to demonstrate the impact of any one of these uses on the public perception of Opposer’s famous mark DIOR."

Gramkey further contended that Opposer failed to show that "the DIOR mark is widely recognized by the general consuming public rather than the narrow niche of wealthy couture consumers." The Board was unmoved: "DIOR goods do not have to be purchased by the general public for the DIOR mark to be recognized by the general public. The duration, extent, and geographic reach of the advertising and publicity of Opposer’s DIOR mark is exceptional, and has resulted in the DIOR mark remaining in the eye of the general public for decades."

The Board then considered the similarity of the marks, i.e., whether applicant’s GIGI DIOR mark "is sufficiently similar to Opposer’s famous DIOR mark as to 'trigger consumers to conjure up' Opposer’s mark." It found that "DIOR connotes Opposer’s DIOR, and its founder, the fashion designer Christian Dior. While the prefatory term GIGI makes the marks different, it does not change the connotation of DIOR or the strong similarity created by Applicant adopting Opposer’s famous mark in its entirety."

There was no evidence of actual association of the GIGI DIOR with opposer. Applicant admitted promoting GIGI DIOR with adult-themed photographs and videos that depict one or more of the DIOR marks. [see picture above]. However, there was no evidence of the extent of such use, and so the Board deemed this factor neutral.

Conclusion: "There is no question that DIOR is a famous mark, that DIOR goods are widely used and recognized by a large percentage of the United States population, and that Opposer’s DIOR mark is distinctive. This was the case prior to Applicant’s proven date of first use of its mark. This impairs the distinctiveness of Opposer’s previously registered mark. In view thereof, we find dilution by blurring."

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TTABlogger comment: How about "Versace Dior?" Dissimilar or double-dilution?

Text Copyright John L. Welch 2025.

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