Dior’s trademark battle against an adult film star over her use of its name in her stage name is heating up. In a recently-filed brief that it lodged with the U.S. Patent and Trademark Office’s Trademark and Appeal Board (“TTAB”), Dior argues that Stephanie Hodge aka Gigi Dior’s use of its mark – especially in connection with “sexually-explicit images and words” – dilutes its famous brand and is likely to confuse consumers in the process. In the July 18 brief, Dior drives home its overarching claim that it will be harmed in the event that Hodge is allowed to register her stage name with the U.S. Patent and Trademark Office (“USPTO”), specifically doubling-down on its argument that the GIGI DIOR mark is likely to cause dilution by tarnishment and blurring – and that Hodge cannot rely on First Amendment, parody, or similar defenses in connection with the opposition proceeding.
Setting the stage in its brief, Dior asserts that it cannot allow Hodge to register GIGI DIOR in connection with “personal appearances by a porn star” and “adult-themed” entertainment services, as “doing so would not only provide [her] with exclusive rights in a confusingly similar mark that incorporates the famous DIOR mark in its entirety, but the inevitable association with the DIOR mark would tarnish Dior’s carefully curated brand and reputation.” Such a registration would be particularly harmful, per Dior, as an “essential component” of its advertising and promotional activities are the brand sponsorship and brand ambassador relationships with celebrities and entertainers that it has cultivated.
In addition to reemphasizing the allegations in its initial opposition filing in October 2022 and in testimony that its CFO Hien Tran Trung provided to the TTAB in February, including how it is “likely to be damaged by [Hodge’s] registration and use of the GIGI DIOR mark,” Dior details Hodge’s alleged attempt to associate herself with the brand and the fashion industry more broadly.
“The record illustrates that [Hodge] intentionally uses the GIGI DIOR mark to create an association with Dior and the DIOR marks,” Dior argues. For instance, Hodge “has the audacity” to incorporate images of actual Dior products in the background of her sexually explicit social media posts, which “provide a snapshot depiction” of how she not only dilutes Dior’s brand via her chosen stage name, but also “conjures associations that clash” with Dior’s brand, the company contends. More generally, Dior claims that Hodge “has repeatedly linked GIGI DIOR to the fashion industry” by offering up apparel under the mark and “tying her entertainment services into the fashion arena with a video series where she holds herself out as a former model recreating celebrity designer fashion looks that she posts on YouTube.”
Taken together, such unauthorized uses of the Dior mark “conjure associations that clash with the associations generated by [Dior’s] lawful use of its mark,” thereby, giving rise to Dior’s dilution by tarnishment claim. But beyond that, the LVMH-owned brand asserts that Hodge’s use of the DIOR word mark gives rise to the potential “whittling away of [the] distinctiveness” of its famous name. Specifically, Dior alleges that the similarities between Hodge’s stage name and its well-known trademark will “trigger consumers to conjure up” its widely recognized brand when they encounter Hodge’s use of the GIGI DIOR mark. The risk is especially high, Dior argues, because of the similarity between the marks, as well as its own marketing strategy, which frequently involves celebrity brand ambassadors, including actresses.
Hodge’s use of the DIOR mark is also likely to confuse consumers, Dior claims, as they “are likely to observe this overlap between the parties’ respective goods and services,” and “with shared marketing forums, and through use of entertainers and overlapping references to celebrities and the fashion industry, consumers are likely to mistakenly believe that Dior has sponsored GIGI DIOR, has some form of affiliation or partnership with GIGI DIOR, or that GIGI DIOR is a Dior brand ambassador.” This is true, Dior argues, even if it “does not offer sexually-explicit goods.”
Looking to get ahead of any potential First Amendment arguments that Hodge might make, Dior asserts in its filing that she “may argue that her explicit videos and imagery are creative expression or a parody of Dior and the DIOR marks.” The problem with such an argument, according to Dior, is that it “does not provide a defense in the context of a trademark registration dispute.” (On this point, Dior cited TTAB precedent, which states that the “noncommercial use” exception of 15 U.S.C. § 1125(c)(3)(C) does not apply in a Board proceeding and that “parody” is inapplicable where a claimant seeks registration of a mark).
Beyond that, Dior argues that since Hodge is using its GIGI DIOR mark as a service mark, “it falls outside the scope of any First Amendment protections offered by the Rogers Test.” Citing the Supreme Court’s holding in Jack Daniel’s Properties, Inc. v. VIP Prod. LLC, counsel for Dior claims that the Rogers Test, which may provide First Amendment protection to artistically expressive uses of trademarks, “does not apply where the accused trademark is used as a designation of source.” Accordingly, the Rogers Test “does not apply in this registration proceeding because, as part of its pending application, [Hodge] expressly claims use of GIGI DIOR as a service mark.”
> The Bottom Line: “The record establishes that [Dior’s] asserted DIOR marks are strong, well-known, and famous. [Hodge’s] registration and use of the GIGI DIOR mark in connection with adult-themed entertainment services, which include sexually-explicit images and words, is likely to dilute the famous DIOR Marks by tarnishment and blurring. [Her] registration and use of a confusingly similar mark that incorporates the DIOR mark in its entirety is also likely to cause confusion,” and thus, the TTAB should refuse to register the mark, Dior argues.
Hodge’s Testimony: Dior’s brief follows from Hodge’s own testimony, which she filed with the TTAB in March. In her declaration, Hodge raised a number of potential defenses, arguing, among other things, that she “did not select or adopt the name Gigi Dior with any intent to suggest to consumers that the source of [her] personal services is anyone other than [herself]” and did not choose the name to “call to mind clothing, jewelry, bags, or leather goods.” At the same time, she stated that she does not “feature” Dior products in her performances and that any Dior-branded items are only displayed “in passing.”
Moreover, Hodge stated that she does not “incorporate any couture, including [Dior’s] couture, into any of [her] personal porn star appearances or adult-themed photographs and videos.” And in fact, she revealed that she routinely wears “cheaper, non-couture clothing … because an adult film industry standard practice is that an outfit, which must typically be provided by the performer at the performer’s expense, can only be worn for one professional shoot and that outfit can never be worn again for another professional shoot.” With this in mind, Hodge said that “adult entertainment actors and actresses do not typically incorporate couture into their performances and most commonly perform without any clothing.”
As for actual confusion, Hodge confirmed in her declaration that she is “not aware of a single instance where a third party seriously inquired” about a “business connection, affiliation, sponsorship, or commercial relationship between” herself and Dior.
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