Chanel, Inc.v.Jerzy Makarczyk

Trademark Trial and Appeal Board

May 13, 2013

No. 91208352 (T.T.A.B. May. 13, 2013)

CME/PWC Mailed: May 13, 2013

Opposition No. 91208352

Chanel, Inc.

v.

Jerzy Makarczyk

Christen English, Interlocutory Attorney:

On February 5, 2013, opposer filed a request pursuant to
Trademark Rule 2.120(a)(2), 37 C.F.R. § 2.120(a)(2), for Board
participation in the parties’ settlement and discovery
planning conference (“discovery conference”) mandated under
Fed. R. Civ. P. 26(f), and Trademark Rule 2.120(a)(1) and
(a)(2). On February 19, 2013, the Board participated in the
parties’ telephonic discovery conference. On February 20,
2013, the Board issued an order addressing matters discussed
during the discovery conference, including the parties’
interest in utilizing accelerated case resolution (ACR) to
resolve their dispute in this proceeding.1

1 Information regarding ACR may be found in TBMP §§
528.05(a)(2), 702.04 and 705 (3d ed. rev. 2012) and the ACR & ADR
section of the Board’s internet webpage at
http://www.uspto.gov/trademarks/process/appeal/index.jsp.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS A
PRECEDENT OF
THE TTAB
Opposition No. 91208352

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This matter now comes up on the parties’ stipulation,
filed April 5, 2013, to use the Board’s ACR procedure to
pursue resolution of this proceeding on the merits.
By way of background, pro se applicant seeks registration
of the mark CHANEL, in standard characters, for “Real estate
development and construction of commercial, residential and
hotel property.”2 In its notice of opposition, opposer
alleges priority in and likelihood of confusion with its
registered CHANEL mark for a range of goods and services,
including but not limited to cosmetics, toiletries, clothing,
leather goods, jewelry, and related services,3 false
suggestion of a connection and dilution. In his answer,
applicant denies the salient allegations in the notice of
opposition.
Pursuant to their ACR agreement, the parties have entered
into the following procedural stipulations:
1) Neither party shall conduct discovery or rely on
expert testimony;
2) The parties shall forego trial and an oral hearing;

2 Application Serial No. 85600670, filed April 17, 2012,
alleging first use dates of May 15, 2008.

3 Opposer has pleaded numerous registrations all of which are
more than five years old.
Opposition No. 91208352

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3) The parties shall submit summary judgment briefs,
accompanied by any evidence, which may be submitted in
the form of declarations or affidavits;
4) The page limit for the parties’ briefs shall be the
page limit permitted for trial briefs pursuant to
Trademark Rule 2.128(b);
5) The parties are not required to submit separate
statements of material fact as part of their briefs;
6) Evidence may be marked as “Confidential” or
“Attorney’s Eyes Only” pursuant to the Board’s
protective order automatically applicable in this
proceeding; and
7) The parties agree that the Board may resolve genuine
disputes of material fact and issue a final ruling
based on the parties’ ACR submissions.
The parties further stipulate to the following facts:
1) “Applicant does not claim rights in or use of CHANEL
in connection with any goods or services including
real estate development and construction of
commercial, residential and hotel property in the U.S.
prior to May 15, 2008”;
2) “Opposer used and registered CHANEL for retail store
services, clothing, jewelry, fragrances and beauty
items prior to May 15, 2008”;
Opposition No. 91208352

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3) “The opposed mark CHANEL is identical to [o]pposer’s
trade name CHANEL”;
4) “The opposed mark CHANEL is identical to [o]pposer’s
federally registered trademark CHANEL”;
5) “Other than the CHANEL mark opposed herein,
[a]pplicant does not own any other trademark
applications or trademark registrations in the United
States that includes [sic] in whole or in part
CHANEL”;
6) “Applicant uses in connection with his real estate
development and construction of commercial,
residential and hotel property services not only the
CHANEL mark but also the marks HERMES and PLAYBOY
among others”;
7) “Opposer has never given [a]pplicant any consent or
permission or otherwise authorized [a]pplicant to use
or register the CHANEL mark in connection with any
goods or services”; and
8) “There is no connection or affiliation between
[o]pposer and either [a]pplicant or [a]pplicant’s
goods or services.”
Finally, the parties’ stipulate to the following briefing
schedule subject to the right to extend the deadlines upon
consent:
Opposition No. 91208352

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Submission of Opposer's ACR Brief
and Evidence 9/9/2013

Submission of Applicant's ACR
Brief and Evidence 10/7/2013

Submission of Opposer's ACR
Rebuttal Brief and Evidence, if
any 10/28/2013

Because the parties agree that the Board may resolve
disputes as to material fact which the Board may find to
exist,4 and may issue a final ruling after considering the
parties’ ACR submissions, the parties’ April 5, 2013 ACR
stipulation is hereby APPROVED. The Board will expedite
determination of this matter and render a final decision in
accordance with the evidentiary burden at trial, that is, by a
preponderance of the evidence. See, e.g., Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir.
2000). The Board will endeavor to issue a decision on the
merits within 50 days of the due date for opposer’s rebuttal
brief.
The interlocutory attorney assigned to this case is
available for telephone conferences should any questions or
issues arise concerning this ACR proceeding.

4 The Board construes the parties’ stipulation as an
agreement that the Board may decide any issues not anticipated by
the parties but which the Board may find the record to present.