An exclusive limited-edition complexion palette “featuring four shades inspired by the colors of Paris, London, New York and Tokyo” is at the center of a budding luxury-level trademark fight between Chanel and Hermès. According to the Birkin bag-maker, the name of its fellow luxury brand’s “Voyage De Chanel” product is a bit too similar to its own “Voyage d’Hermès” trademark, and thus, is asking the U.S. Patent and Trademark Office (“USPTO”) to put a halt to Chanel’s pending application for the mark.
In October 2018, Chanel filed a trademark application for registration for “Voyage De Chanel,” a trademark that it intended to use – but was not yet using – on cosmetics. Fast forward to March 2019 and the Paris-based brand began offering up $70 “Voyage De Chanel” complexion palettes.
A month later, Hermès – seemingly having gotten word that Chanel was actually using “Voyage De Chanel” and not merely filing an application for a mark that may or may not come into fruition – filed an opposition with the USPTO’s Trademark Trial and Appeal Board (“TTAB”). In its April 2018 filing, counsel for Hermès pointed to an existing registration that the 182-year old brand holds for “Voyage d’Hermès” for use on perfumes, body lotions, and beauty creams, among other things. It turns out, Hermès has been using the Voyage d’hermes mark for nearly a decade, and has maintained a registration with the USPTO for it since January 2010.
According to Hermès, its rival’s “Voyage De Chanel” is markedly similar to its existing mark, as “the first portions of [both] marks – ‘Voyage De’ and ‘Voyage D’ – are identical in sound and meaning and are virtually identical in appearance,” and in both instances, “the ‘Voyage De/D’ phrase is followed by a luxury French fashion house brand, namely, Chanel and Hermès.”
More than that, Hermès asserts that Chanel’s mark is “visually, phonetically and conceptually similar” to its mark as it “creates a similar overall commercial impression.”
With its “superior” rights in mind, and given the similarity of Chanel’s mark, Hermès asserted that it “believes it will be damaged by the registration of [Chanel’s] mark,” namely because Chanel’s “use and registration” of Voyage De Chanel for cosmetics “is likely to create confusion, mistake or deception, in that relevant consumers are likely to believe that [Chanel’s] goods are sponsored, licensed or approved by [Hermes] or that [Chanel] is in some manner connected or associated with [Hermes].”
As such, Hermès, in furtherance of its opposition – a process by which any party that believes it may be damaged by the registration of a trademark may initiate a proceeding with the TTAB – requested that the trademark body block Chanel’s mark.
In its June response to Hermès’ opposition, Chanel’s counsel denies a number of Hermès’ assertions, including that the two brands’ “Voyage” trademarks are “highly similar,” that they are “identical in sound and virtually identical in appearance,” that the “parties’ goods are sold in the same or similar channels of trade” and that they “target the same or similar consumers.” With that in mind, Chanel further denies that its mark is likely to cause consumer amongst consumers, and so, Hermès’ opposition should be dismissed and that its mark should proceed to registration.
Next up in the process: each side will provide the names and contact information for each individual likely to have discoverable information – along with the subjects of that information – that the disclosing party may use to support its claims or defenses.
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