Louis Vuitton Wins Tender to Deregister VIIITION Trademark
Louis Vuitton has succeeded in its bid to void another party’s US trademark registration, arguing that a stylized VIITION for use on a variety of homewares and furniture is not only likely to confuse consumers, but to dilute the strength of its famous brands. In an unprecedented ruling last month, a panel of administrative judges from the U.S. Patent and Trademark Office’s (“TTAB”) Trademark Trial and Appeals Board sided with Louis Vuitton. , granting its motion to vacate on the grounds that Quanzhou Viition Gifts Co. , Ltd.’s VIIITION trademark. is likely to undermine its “extremely famous and very distinctive” brand.
Setting the stage in the TTAB opinion, Administrative Trademark Judge Kuhlke says that in October 2019, Louis Vuitton filed for cancellation of Quanzhou Viition’s trademark, which had been registered by the U.S. Patent and Trademark Office. brands in June 2019. Louis Vuitton argued that the stylized VIITION brand “looks so much like [its] previously used and registered LOUIS VUITTON trademark for a variety of products” which “reminiscent” – and therefore, is likely to dilute – the distinctiveness of this famous trademark, which Louis Vuitton began using decades before the Quanzhou filing date Viition and date of international registration.
(Quanzhou Viition started using the VIITION brand in China in 2012 for furniture and housewares, and currently uses it on other consumer goods, such as string lights, birdbaths, etc., and has since begun selling “some of VIITION’s branded products in the United States and intends to distribute its products in the United States through major outlets offering low-cost consumer goods, such as Walmart and Amazon,” according to the TTAB. In addition to Louis Vuitton’s aggressive enforcement stance, the expansion of Quanzhou Viition’s products and growing use in the United States is likely what prompted the brand’s attorneys of luxury goods to act.)
Focusing its attention on the dilution of Louis Vuitton by a fuzzy allegation, the TTAB claims that the French luxury giant meets the “distinctive and famous brand” requirement for dilution. Although “it is undisputed that the LOUIS VUITTON mark is distinctive”, the TTAB judges analyzed the notoriety of the LOUIS VUITTON mark for dilution purposes to determine whether the mark “is widely recognized by the general public. United States consumer as a source designation of the trademark owner’s goods or services.” (Spoiler: It is.)
In deciding that the LOUIS VUITTON mark is, in fact, “excessively famous and entitled to protection against dilution”, the TTAB considered a combination of factors, including the degree of similarity between the two parties’ marks, the distinctiveness and recognition of Louis Vuitton’s mark, the extent to which Louis Vuitton uses its mark in a “substantially exclusive” manner, whether Quanzhou Viition intended to create an association with the LOUIS VUITTON mark and whether there is actual association between the parties’ marks.
Primarily, the TTAB noted Louis Vuitton’s billion-dollar sale of “an enormous array of products, including paperweights, stationery, posters, coasters, plates, mugs, cushions, blankets and candles” across the United States, and its model of conducting “extensive advertising and marketing campaigns to place its brand in the public eye and in the consciousness of consumers”, including ” campaigns in all media, celebrity endorsements and sponsorship of major cultural, sporting and charitable events, [which] expose the [Louis Vuitton] brand to the general public. The result, according to the TTAB, is that the general public has a real awareness of the LOUIS VUITTON brand.
Regarding similarity of marks, Quanzhou Viition objected to Louis Vuitton’s claims on this front by asserting that its mark “does not share the primary and dominant part of [Louis Vuitton’s] LOUIS brand and consumers are generally more inclined to focus on the first word of a brand. Not convinced, the TTAB noted that the two brands “contain seven letters, starting with V [have] IT in the middle and end up ON with VITO and N in the same order in a short word. Beyond that, the TTAB agreed with Louis Vuitton, who argued that the absence of a first word (like Louis) in the Quanzhou Viition brand is not a death knell in terms of similarity, because the consumers are “accustomed to seeing shortened names for fashion and lifestyle brands. Overall, the TTAB determined that the VIITION brand “has a similar visual commercial impression to the VUITTON portion of [Louis Vuitton’s] trademark” and, consequently, could alter the distinctive character of the Louis Vuitton trademark.
The TTAB noted that Quanzhou Viition had rebuffed Louis Vuitton’s attempt to cite a separate registration for a trademark consisting exclusively of the word “Vuitton”, as well as asserting the trademark “for use on furniture and other goods not invoked in the petition”. for rescission,” claiming that the brand was seeking to “present evidence and testimony about property other than those specifically listed in its pleading.” The TTAB agreed that Louis Vuitton was not relying on a separate VUITTON mark.
At the same time, the TTAB rejected Louis Vuitton’s earlier allegation that its use of the “Louis Vuitton” trademark “in connection with a variety of products including clothing, footwear, accessories, jewelry, bags, retail and online services, and related goods and servicesextends to furniture. However, the panel found that “this does not preclude the analysis from considering VUITTON’s dominance in the LOUIS VUITTON brand or industry practice of abbreviating names, in determining whether there is a risk of confusion or whether an association would be made.” The TTAB judges also noted that if Louis Vuitton “cannot rely on the undisputed goods or services for priority purposes,” it may use evidence of use on a variety of goods and services as “evidence of the relationship between its pleaded goods and services and [Quanzhou Viition] identified goods”.
Beyond the similarity of the marks, the TTAB found that there was “no evidence to suggest that [Quanzhou Viition] intended to create an association with [Louis Vuitton’s] brand”, which gives a neutral factor. Similarly, the TTAB found “no evidence of any actual public association” between the two parties’ marks, but this is “not surprising” given the “no (or minimal) concurrent use in the American market.
“Considering the evidence as a whole,” Administrative Marks Judge Kuhlke said the TTAB panel “concludes that [Quanzhou Viition’s] VIITION brand is likely to dilute the distinctive quality of [Louis Vuitton’s] famous trademark LOUIS VUITTON”, thus granting Louis Vuitton’s request for annulment based on the dilution by interference.
It is the latest example of what the TTAB sums up (Louis Vuitton’s board testimony) as “a robust enforcement program” maintained by Louis Vuitton, including “regularly[ing] time extensions to oppose potentially infringing marks and send[ing] cease and desist letters to applicants, often resulting in abandonment. Beyond that, Louis Vuitton’s lawyer said in a previous round of proceedings that from 2010 to 2020, Louis Vuitton “filed at least twelve opposition proceedings involving the LOUIS VUITTON trademark” (here are some one led by Louis Vuitton in the European Union), and since 2010, it has filed approximately 120 lawsuits in federal district courts to protect its trademarks, including the LOUIS VUITTON trademark.
The cancellation procedure is Louis Vuitton Malletier c. Quanzhou Viition Gifts Co., Ltd., No. 92072688.