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Monday, April 20, 2015

Chanel and Mrs. Jones

Last fall, fashion house Chanel filed a trademark action against hairstylist Chanel Jones (discussed here at The Fashion Law), to prevent Jones from using her first name in connection with her business. The case was notable given the relative size of the parties and the distance between their markets--Jones' hair salon is in Merrillville, Indiana, which seems more than a stone's throw from the Rue Cambon in Paris which Chanel calls home. Why bother? 

Moreover, the press' attention was undoubtedly caught by the fact that the company filed suit against an owner using her first name for her business, which is a common practice for personal service concerns. As Gene Quinn remarked in a different context, "How crazy would it be if you couldn’t even use your own name on your store front?" Well, as this survey of the case law by Christopher Bussert points out, in the past courts have enjoined companies from using their founder's name on their products and/or services when a senior (read: prior) user has established rights to the same name. 

As background, since the 1960's, Chanel (or alternatively Shanelle) has become an increasingly popular first name.

Chanel name popularity

Since Gabrielle Chanel started her brand in the earlier part of the 20th century, the fashion house has grown in size and repute. Today, Chanel primarily sells clothing, accessories and beauty items. Although Chanel does not currently offer hair salons, the line does sells some hair accessories and a shower wash that can be used for hair. Further, Chanel's complaint asserts that its name is a "famous mark," which in trademark parlance means that the company asserts strong rights that allow the prohibition of non-competing uses that are likely to dilute its fame. Moreover, the law requires mark holders to police unauthorized uses of their marks lest they become generic (and consequently unenforceable).

I did some digging into the disposition of Chanel's case on Lex Machina, a great resource for those looking into pleadings and analytics of IP cases to find out more. According to Chanel's complaint, the brand sent five letters to Chanel Jones before filing suit but obtained no response. It did not seek damages. It does not appear from the docket that Chanel Jones secured representation. Indeed, the Court sua sponte struck the answer filed on behalf of Chanel Jones' business because LLCs cannot appear pro se. The matter settled with a consent judgment in which Chanel Jones agreed not to use the term "Chanel" in connection with her business. According to the minutes of a status conference before the court, Chanel indicated its willingness to help with any costs associated with the change, although the record does not disclose whether this occurred in fact. So ends that one. 

More broadly, trademark law is designed for a one-winner-take-all approach rather than a bargained solution that permits peaceful co-existence. Is this area of the law is well designed for creative industries? It seems as those Chanel could be using resources to do whatever it does best, rather than using them to defend its mark (for more on this point, see Devin Desai and Sandra Pierson's Confronting the Genericism Condundrum). At the same time, I can imagine that these disputes create significant wear and tear on those who must respond. As Chanel Jones stated in her answer, "I am just trying to make an honest living for my family and myself." As I argue here, design houses like Chanel contribute a fair share of positive externalities in the creative ecosphere, and fine-tuning rewards for those efforts appears to be more in line with the public interest.

Posted by Amy Landers on April 20, 2015 at 12:05 PM in Intellectual Property | Permalink

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