Dior has beaten out an adult film star in the latest round of a trademark registration battle. In an opposition proceeding that has been playing out before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB” or the “Board”), Dior successfully blocked the registration of the “GIGI DIOR” word mark, with the TTAB finding that if Stephanie Hodge were permitted to register the mark, it would be harmed. In siding with Dior, the TTAB confirmed that the LVMH-owned luxury brand’s DIOR mark is “so distinctive that the public would associate the term with [Dior] even when it encounters the term apart from [Dior’s] goods.”
A Bit of Background: Hodge filed an application for register for “GIGI DIOR” back in October 2021 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,” in International Class 41, 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 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.
TTAB’s Ruling: Protecting a Luxury Icon from Dilution
In a non-precedential opinion issued on January 31, as first reported by TFL, the TTAB sustained Dior’s opposition on the grounds of dilution by blurring, finding that the French fashion house had established:
> Fame and Distinctiveness: The Board ruled that DIOR is a widely recognized brand with a long history of advertising, sales, and celebrity promotion, making it inherently distinctive. According to the TTAB, “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 [Christian Dior’s] DIOR mark is distinctive.”
> Similarity of the Marks: Despite the addition of “Gigi” to her mark, the Board found that DIOR remains the dominant and distinctive part of Hodge’s mark, reinforcing the connection in consumers’ minds. (While the TTAB did not take on likelihood of confusion, it noted that Hodge’s “efforts to expand her services to fashion advice” – as indicated by a series of YouTube videos in which she recreated celebrity looks and “designer fashion looks,” including a Gucci outfit – “indicates an intent to create an association with DIOR.”)
> Likelihood of Dilution: The Board determined that the use of GIGI DIOR could weaken the association between DIOR and luxury goods, thereby diluting its uniqueness.
While Dior had also claimed dilution by tarnishment, the Board did not rule on this issue, focusing instead on the more clear-cut case of blurring – where the power of a famous trademark is eroded by an unauthorized, similar use in an unrelated field.
A Warning to Unauthorized Brand Extensions
The TTAB’s decision not only underscores the strength of the DIOR mark in the marketplace, it serves as a warning to businesses – and individuals – attempting to leverage famous trademarks for unrelated ventures. The ruling aligns with past decisions where luxury brands have fiercely protected their trademarks against dilution, particularly in cases involving adult entertainment or sectors that could serve to impact brand perception. For Hodge, the ruling means that the GIGI DIOR trademark will not proceed to registration; it does not, however, necessarily prohibit her from using the name. It does prevent her from obtaining federal trademark protection – and from benefiting from the exclusivity and commercial leverage a registered trademark provides.
Additionally, this matter reinforces Dior’s position as a powerhouse in brand protection and highlights the broad legal protections available to globally recognized trademarks. As fashion brands increasingly seek to expand their intellectual property enforcement strategies, this decision is noteworthy for companies looking to take on allegedly infringing or diluting uses of their marks in non-traditional capacities.
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