Lat week, Chanel, arguably the ultimate arbiter of all things chic, sued a woman named Chanel Jones for trademark infringement and dilution. Her crime? Using her own name in the name of her business: Chanel’s Salon. The Parisian brand filed the lawsuit in the U.S. District Court for the Northern District of Indiana, as the salon and Jones are based in Merrillville, Indiana.
In the suit, the brand claims that the use of the name Chanel by Jones amounts to trademark infringement as it allegedly infringes on at least nine trademarks registered with United States Patent and Trademark Office. The brand argues that Jones and her business are benefitting off of the goodwill of the mark Chanel.
Now, I am a fierce champion for the intellectual property rights of designers and fashion houses. It takes a lot of hard work, and time, and effort to create and maintain a successful brand in the industry, an industry where as Heidi Klum so eloquently puts it every week on Project Runway, “One day you’re in and the next day, you’re out.” But, it does seem a bit ruthless to institute this lawsuit. However, under the law, Chanel will likely be the one to come out on top. So, let’s take a look at the law, shall we?
Under the Lanham Act, an entity is entitled to federal protection of mark, which means that no other entity can use that mark or a mark that is confusingly similar, because then they would be trading off of the goodwill and reputation developed by the mark owner and diluting the worth of the mark.
Here, Chanel is arguing that because Jones used the word ‘Chanel,’ Jones is trading off of the national and international reputation of the Parisian fashion house. Jones, no doubt, will argue that she is firstly, entitled to use her own name in the use of her business, which arguably is not the same industry as Chanel’s.
The question, here, becomes is Chanel entitled to exclusive use of the word ‘Chanel’, meaning that even if a person has the name Chanel, he or she is not entitled to use the name in business, if that mark is already federally registered? As many brands within the fashion industry are based on the names of designer who created and designed the brand in its initial stages, this is an important question for fashion brands to ask.
Trademarking personal names is a tricky business. A couple years ago, during my clerkship at a law firm, I was tasked with federally registering 4 trademarks that included the client’s name. These trademarks were names of businesses that the client operated and had operated for several years. I filled out the paperwork and submitted it, but in a couple months’ time, all 4 trademark registrations were denied, simply because it included a person’s name.
The USPTO, however, informed us that the trademarks could be registered if we provided proof that the marks attained secondary meaning. This is the USPTO’s usual practice: they do not allow the trademark of personal names, unless there is demonstrated proof of secondary meaning associated with that name.
Secondary meaning means that the public associates the trademark with a specific business or company. Here, Chanel can and has argued that the word ‘Chanel’ has acquired secondary meaning and that the USPTO in fact held that the mark had acquired widespread recognition and is a household name associated with high fashion.
There is no real argument that Chanel hasn’t acquired secondary meaning and that consumers associate the word ‘Chanel’ with the fashion house. Chanel is so famous, not only in the fashion industry, but also in the world. It’s doubtful that any person doesn’t truly know what Chanel is. Therefore, it would seem that the court will agree with Chanel and determine that the use of the mark is infringement and dilution of the brand’s reputation and goodwill, because it is such a strong mark that is associated with the brand and with high fashion.
So, while usually a person is entitled to use their own name in the business, if that name name has already been trademarked and has acquired secondary meaning, it seems that that person, in this case, salon owner, Chanel Jones, will be out of luck.
And, while it seems rather harsh to institute a lawsuit against a small business owner, such as Jones, today’s fashion brands have to be vigilant about the use of their intellectual property rights. Our world is becoming smaller and smaller and much more connected, which means that a brand’s ubiquity is overwhelming and far-reaching. Even people in small towns like Merrillville, Indiana, will know of the high fashion brand, Chanel. And, if Chanel allows a small business to use its mark in name of her business, it could open the floodgates to allow other small businesses to use the mark and then potentially allow counterfeiters to use the mark on their products.
A fashion brand’s identity, which is based off of its creativity and ability to innovate, is tied to its value, which is maintained by vigilant protection of its intellectual property rights. So, it is somewhat understandable that Chanel would want to prevent any sort of infringement of its IP rights, even if it is against a small business owner in the Mid-West.
- “Chanel Suing a Woman Named Chanel For Naming a Spa After Herself – Wait, What Was That?” Bustle.
- “Chanel Doesn’t Want You Using the Word Chanel, No Matter What,” The Fashion Law.