The deliberate adoption of a similar mark may lead to an inference of intent to pass off goods as those of another which in turn supports a finding of likelihood of confusion. The proper focus is whether defendant had the intent to derive benefit from the reputation or goodwill of plaintiff.
Appellant produced and marketed apparel throughout the world, much of which was identified by appellant's registered trademark "Jordache." The trademark was printed in block letters superimposed over a drawing of a horse’s head. Appellees marketed blue jeans for larger women under the name "Lardashe" which sounds similar to the trademark “Jordache” but instead of a horse’s head, the logo contained a smiling pig. Appellees' sales were limited to specialty shops in several Southwestern states. Appellant filed suit alleging trademark infringement in violation of the Lanham Trademark Act, 15 U.S.C.S. §§ 1051-1127, the New Mexico Trademark Act, N.M. Stat. Ann. §§ 57-3-1 to 57-3-14, and common law. The district court ruled that there was no likelihood of confusion.
Does a parody of a registered trademark constitute trademark infringement?
The court affirmed, holding that the record indicated appellee's mark was a parody and not likely to cause confusion; therefore there was no dilution of appellant's mark. The court held that in order to be actionable, the association of the two marks had to tarnish or appropriate the good will of the owner's mark. The court also ruled that the owner of a mark suffered no actionable injury where marks were only used for parody purposes.