On May 14, in a
non-precedential opinion, the Trademark Trial and Appeal Board ("TTAB") in the
matter of PRL U.S.A. Holdings, Inc. v.
Thread Pit, Inc. cancelled Thread Pit's registration of the mark:
Thread Pit's mark for
"t-shirts and collared polo shirts" was cancelled on the basis of likelihood of
confusion with Ralph Lauren's iconic polo player:
What was otherwise a
straightforward application of the DuPont Test [In re I. E. du Pont de Nemours and Co., 476 F. 2d 1357, 177 USPQ 563
(CCPA 1973) [enhanced version]] was enlivened by Thread Pit's assertion of a parody defense. Thread Pit argued that "[t]he intent of the
design of Registrant's mark was to parody the elite in society as embodied by
the sport of polo." This parodic element should be considered under the
thirteenth Du Pont factor: "Any other established fact probative of the effect of use."
476 F. 2d at 1361 [enhanced version]. Thread Pit asserted that: "One factor is the
satiric, parodic nature of Registrant's mark.
... Numerous visitors to the Thread
Pit website placed satiric, humorous comments about Registrant's mark. ...
These and other comments clearly demonstrate that Registrant's mark
communicates an element of satire, ridicule, joking, or amusement."
The TTAB would have none of the argument: "Parody is not a defense if
the marks are otherwise confusingly similar."
PRL U.S.A. Holdings, Inc. v. Thread Pit, Inc., Cancellation No. 92047436, 15 (TTAB May 14, 2012). In any case,
Respondent has stated that its mark is "a parody of the societal elite as
embodied by the sport of polo, which is perceived to be a sport reserved for the
elite. The rider falling off the horse is the parody of that elite, luxury
lifestyle. And of the humor in seeing someone fall off a horse, somewhat like
in slapstick comedy." [citation omitted] This is similar to the circumstances
in Nike, Inc. v. Peter Maher and Patricia Hoyt Maher, 100 USPQ2d 1018, 1023 (TTAB 2011) [enhanced version]. In that case,
the Board found that where "a defendant appropriates a trademarked symbol such
as a word or picture, not to parody the product or company symbolized by the
trademark, but only as a prominent means to promote, satirize or poke fun at
religion or religious themes, this is not 'parody' of a trademark." Similarly,
here, parodying a lifestyle is not a parody of a trademark.
See Thread Pit, Cancellation No. 92047436 at 15-16.
Parody as a defense to
copyright infringement has a long and glorious history in U.S. jurisprudence
(see, e.g., Benny v. Loew's Inc., 239 F.2d 532 (9th Cir.1956) [enhanced version], aff'd by
an equally divided Court, 356 U.S. 43 (1958) [enhanced version]; Berlin v. E.C. Publications, Inc., 329 F.2d 541 (2d Cir.) [enhanced version] (listing
critiques), cert. denied, 379 U.S. 822 (1964)) [enhanced version]), and was enshrined in Campbell v. Acuff Rose Music, Inc. 510 U.S. 569 (1994) [enhanced version]. Trademark
law differs from copyright law, however. When the two spheres intersect, as
when an expressive work makes use of a mark, then "[S]ection 43(a) of the Lanham
Act does not bar a minimally relevant use of a celebrity's name (i.e., as a
mark) in the title of an artistic work where the title does not explicitly
denote authorship, sponsorship, or endorsement by the celebrity or explicitly
mislead as to content." Rogers v.
Grimaldi, 875 F.2d 994, 1005 (2d Cir. 1989) [enhanced version]. However, this is
not about expression but about selling t-shirts (or academic symposia).
identify goods or services, and the law protects them so that consumers are not
confused as to what they are purchasing. "The better view is that parody is not
an affirmative defense in a trademark case, but the humorous intent and any
free speech rights of the parodists must be factored into the courts analysis [of
likelihood of confusion]." Gilson on
Trademarks 5.15[i]. This comment deals with the situation in which the
alleged infringer is using the allegedly infringing and diluting marks to sell
its own goods and does not deal with the issue of tarnishment, which seems to
relate to different times and different mores.
paradigmatic case could have been The
North Face Apparel Corp. v Williams Parmacy, Inc. in the United States
District Court for the Eastern District of Missouri (09-CV-02029). Jimmy
Winkelmann, a teenage college student, started selling fleece jackets under the
brand name "SOUTH BUTT." Mr. Winkelmann's jackets bore more than passing
resemblance to the iconic North Face fleece jacket (see logos and photos of
jackets below). The South Butt tag line was "NEVER STOP RELAXING"; North Face's
tag line is "NEVER STOP EXPLORING." North face sued for infringement and
dilution, and South Butt's defense was parody:
are a Parody of Plaintiff's products.
3. Plaintiff's products are
marketed as products that are to be used in furtherance of an adventurous
lifestyle full of exploring, hiking, climbing, hiking, skiing and other outdoor
4. Plaintiff's products are
generally perceived and actively marketed to be expensive items for the
5. Despite Paragraph 3 and
because of Paragraph 4, Plaintiff's products are perceived as being largely
consumed by those who have little or no interest in living an adventurous
lifestyle, but, rather, are interested in acquiring Plaintiff's products for
the status and/or notoriety they received from being seen in Plaintiff's
expensive apparel and accessories.
6. Defendants recognized
this bizarre phenomenon.
7. Defendants, utilizing parody,
are making a bona fide social commentary on the pervasive banality, frivolity
absurdity and comedic nature of the consumer culture and those who participate
and selling jackets.
for everyone, except presumably the parties, the suit settled before the Court
could rule on this defense of "making a bona fide social commentary on the
pervasive [whatever] of the consumer culture."
In Gucci Shops, Inc. v R. H. Macy & Co., 446 F. Supp. 838
(S.D.N.Y. 1977) [enhanced version], the fashion house obtained a preliminary injunction
prohibiting the manufacture and sale of a diaper bag under the brand "GUCCHI
GOO" with a green, red and green banded stripe.1 The defendant manufacturer's
argument that their use of the marks in issue "indicates an intent to 'poke fun
at' or ridicule plaintiff" received short shrift. "The fact that the offending
product was intended only as a joke is of no consequence." Id. at 840 [enhanced version].
Louis Vuitton was less
fortunate. In Louis Vuitton Malletier S.A v. Haute Diggity Dog LLC, 507 F. 3d 252
(4th Cir. 2007) [enhanced version], Louis Vuitton sued the manufacturer of chew toys
and dog beds that intentionally but loosely imitated a line of LOUIS VUITTON
handbags (see below). Here, the parody defense prevailed. The Court found that
Dog's 'Chewy Vuiton' dog toys, in particular, loosely resemble miniature
handbags and undisputedly evoke LVM handbags of similar shape, design, and
color. In lieu of the
mark, the dog toy uses 'Chewy Vuiton'; in lieu of the LV mark, it uses 'CV'; and the other
symbols and colors employed are
imitations, but not exact
ones, of those used in the LVM Multicolor and Cherry designs."
The Court found that the chew toys were "successful" parodies:
For trademark purposes, "[a] 'parody'
is defined as a simple form of entertainment conveyed by juxtaposing the
irreverent representation of the trademark with the idealized image created by
the mark's owner." People for the Ethical Treatment of Animals v. Doughney
("PETA"), 263 F.3d 359, 366 (4th Cir. 2001) [enhanced version] (internal quotation marks
omitted). "A parody must convey two simultaneous -- and contradictory --
messages: that it is the original, but also that it is not the original and is
instead a parody." Id. (internal quotation marks and citation omitted).
This second message must not only differentiate the alleged parody from the
original but must also communicate some articulable element of satire,
ridicule, joking, or amusement. Thus, "[a] parody relies upon a difference
from the original mark, presumably a humorous difference, in order to produce
its desired effect." Jordache Enterprises, Inc. v. Hogg Wyld, Ltd., 828
F.2d 1482, 1486 (10th Cir. 1987) [enhanced version] (finding the use of "Lardashe" jeans
for larger women to be a successful and permissible parody of
When applying the PETA criteria to the facts
of this case, we agree with the district court that the "Chewy
Vuiton" dog toys are successful parodies of LVM handbags and the LVM marks
and trade dress used in connection with the marketing and sale of those
handbags. First, the pet chew toy is obviously an irreverent, and indeed
intentional, representation of an LVM handbag, albeit much smaller and coarser.
The dog toy is shaped roughly like a handbag; its name "Chewy Vuiton"
sounds like and rhymes with LOUIS VUITTON;
its monogram CV mimics LVM's LV mark; the repetitious design clearly
imitates the design on the LVM handbag; and the coloring is similar. In short,
the dog toy is a small, plush imitation of an LVM handbag carried by women,
which invokes the marks and design of the handbag, albeit irreverently and
incompletely. No one can doubt that LVM handbags are the target of the
imitation by Haute Diggity Dog's "Chewy Vuiton" dog toys.
At the same time, no one can doubt also that
the "Chewy Vuiton" dog toy is not the "idealized image" of
the mark created by LVM. The differences are immediate, beginning with the fact
that the "Chewy Vuiton" product is a dog toy, not an expensive,
luxury LOUIS VUITTON handbag. The toy is smaller, it is plush, and
virtually all of its designs differ. Thus, "Chewy Vuiton" is not
LOUIS VUITTON ("Chewy" is not
"LOUIS" and "Vuiton" is not "VUITTON," with its
two Ts); CV is not LV; the designs on the dog toy are simplified and crude, not
detailed and distinguished. The toys are inexpensive; the handbags are
expensive and marketed to be expensive. And, of course, as a dog toy, one must
buy it with pet supplies and cannot buy it at an exclusive LVM store or
boutique within a department store. In short, the Haute Diggity Dog "Chewy
Vuiton" dog toy undoubtedly and deliberately conjures up the famous LVM
marks and trade dress, but at the same time, it communicates that it is not the
Finally, the juxtaposition of the similar
and dissimilar -- the irreverent representation and the idealized image of an
LVM handbag -- immediately conveys a joking and amusing parody. The furry
little "Chewy Vuiton" imitation, as something to be chewed by a dog,
pokes fun at the elegance and expensiveness of a LOUIS VUITTON handbag, which must not be chewed by a dog.
The LVM handbag is provided for the most elegant and well-to-do celebrity, to
proudly display to the public and the press, whereas the imitation "Chewy
Vuiton" "handbag" is designed to mock the celebrity and be used
by a dog. The dog toy irreverently presents haute couture as an object for
casual canine destruction. The satire is unmistakable. The dog toy is a comment
on the rich and famous, on the LOUIS VUITTON
name and related marks, and on conspicuous consumption in general.
Haute Diggity Dog LLC, 507 F. 3d. at 260-261[enhanced version].
The Court's inquiry did not stop at its finding of "successful parody,"
however: "Finding that Haute Diggity Dog's parody is successful, however, does
not end the inquiry into whether Haute Diggity Dog's 'Chewy Vuiton' products
create a likelihood of confusion." Id. at 261 [enhanced version]. The Court proceeded to a
conventional likelihood of confusion analysis (strength of plaintiff's mark,
similarities between marks, similarities of products, similarities of selling
facilities, similarities of advertising channels, defendant's intent, actual
confusion), finding, in a kind of intellectual judo, that, at least for the
first two and the penultimate factor,
the parodic nature of defendant's mark "neutralized" what would otherwise be
favorable to the plaintiff.
[P]recisely because LOUIS VUITTON is so
strong a mark and so well recognized as a luxury handbag brand from LVM,
consumers readily recognize that when they see a "Chewy Vuiton" pet
toy, they see a parody.
In concluding that Haute Diggity Dog has a
successful parody, we have impliedly concluded that Haute Diggity Dog
appropriately mimicked a part of the LVM marks, but at the same time
sufficiently distinguished its own product to communicate the satire. The differences
are sufficiently obvious and the parody sufficiently blatant that a consumer
encountering a "Chewy Vuiton" dog toy would not mistake its source or
sponsorship on the basis of mark similarity.
Despite Haute Diggity Dog's obvious intent
to profit from its use of parodies, this action does not amount to a bad faith
intent to create consumer confusion. To the contrary, the intent is to do just
the opposite - to evoke a humorous, satirical association that distinguishes
Id. at 262-263 [enhanced version]. So
perhaps a finding of successful parody does end the inquiry as to likelihood of
confusion, give or take a little circular reasoning.
Pet-serving parodists prevailed as well in Tommy Hilfiger Licensing,
Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 416 (S.D.N.Y. 2002) [enhanced version]. The
defendant manufactured "pet perfumes whose names parody elegant brands sold for
Holedigger (Tommy Hilfiger), CK-9 (Calvin Klein's cK-1), Pucci (Gucci), Bono
Sports (Ralph Lauren's Polo Sports), Miss Claybone (Liz Claiborne), and White
Dalmations (Elizabeth Taylor's White Diamonds)." [page cite] Like the court in
the Chewy Vuiton, case, the Court appears to have thought that the plaintiff
should not have taken offense, and the numerosity of the imitations favored the
of the companies that purvey these expensive human fragrances have chosen either to accept the
implied compliment in
this parody-that the mere association of their high-end brand names with a
product for animals is enough to raise a smile-or, if they have taken offense,
to suffer in silence. Not so plaintiff Tommy Hilfiger Licensing, Inc." [page
cite] In addition to the similar name, Nature Labs used a similar logo (see
below) and the catch phrase, "If you like Tommy Hilfiger Your Pet Will Love
Timmy Holedigger." Nevertheless, the Court was not entirely dismissive of
Hilfiger's trademark rights:
[I]t is clear that when another's mark is used
for source identification in a way likely to cause consumer confusion, it is
actionable under the Lanham Act. The First Amendment affords no protection
because trademark law permissibly regulates misleading commercial speech. In
this case, Nature Labs arguably uses an adaptation of the Hilfiger mark for the
dual purpose of making an expressive comment and selling a non-competing
product, an area where it has been noted that line-drawing becomes rather
difficult. However, because the mark is being used at least in part to promote
a somewhat non-expressive commercial product, the First Amendment does not
extend to such use, or to the extent that it does, the balance tips in favor of
allowing trademark recovery, if in fact consumers are likely to be confused.
[citations omitted] Id. at 415-416 [enhanced version].
Court applied the eight-factor Polaroid test
for likelihood of confusion and found none, using the same inverted reasoning
as in the Chewy Vuiton decision.2 Not
surprisingly, the dogs trumped the designer.
The marketers of goods bearing "parodic" trademarks are not social
commentators or Lewis Carroll wannabes-they are trying to move merchandise. If
they get a free ride on the marketing spend and consequent brand recognition of
a famous mark, and consumers buy their goods because the association with a
famous mark captures their attention, it's all funny, especially the money. However, while their speech rights may be of
little account, insufficient attention has been paid to the speech rights of
their customers-who use the products to express their scorn and resentment at
famous marks identifying luxury goods and at the people who buy and wear them.
We will perhaps see more development of this topic in further case law.
We can be assured that trademark parodies will continue to cause
confusion among lawyers and judges and heartburn among owners of famous marks,
which attract (allegedly) parodic imitations like the devotees of Chewy Vuiton
attract fleas. The would-be parodists will attempt to make their marks sufficiently
similar to be identifiable with famous marks, while simultaneously sufficiently
different to be obviously distinguishable-the same, only different. Judges will
doggedly apply multifactor likelihood of confusion tests with a parodic twist.
Still, trademark law is for the protection not of the owners of famous marks,
or the would-be parodists, but of the consuming public, and as long as
consumers are not deceived of confused, it's all good fun.
1. Prior to the hearing, defendant R. H. Macy & Co., Inc., voluntarily removed the offending product from its shelves.
2. [I]t is precisely because of the mark's fame and popularity that confusion is
"[A]n inquiry into the degree of similarity between the two
marks does not end with a comparison of the marks themselves." Hormel
Foods, 73 F.3d at 503 (citation omitted). One must also look to context,
because "the setting in which a designation is used affects its appearance
and colors the impression conveyed by it." Id. As noted, the marks in this
case appear on pet perfume, a product which itself underscores the parody or
pun captured in the label. Further, the packaging of the product bears headings
or slogans that highlight the intended silliness.
Although it is true that the deliberate adoption of a similar
mark may give rise, in the usual case, to a presumption that the copier
intended to confuse consumers, in the case of parody, "the intent is not
necessarily to confuse the public but rather to amuse" ....
Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC,
221 F. Supp. 2d 410, 416-417, 419 (S.D.N.Y. 2002) [enhanced version].
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