Trademark Parody Defense
Parody in trademark parlance means using the name of something in a way that is somehow humorous and relevant to the target of the parody: a “take-off” on the name or on product that is subject of the trademark. It can’t be used in a way the simply trades on the customer recognition of the target product; a “rip-off.” The rule seems to be that a name or trademark is a “parody” if it simultaneously is the name of the target of the parody and at the same time is not the name of the target. A true parody trademark is unlikely to cause confusion, and most likely will not dilute the target trademark; but “parody” is not a complete defense, it only pushes in that direction.
The parody doctrine came to my attention recently when a brewery client decided to name is spring-time specialty beer, a bock, in honor of a movie from the 1980’s with the beer name substituting “BOCK” for the term “BACK” in the ‘80’s film.
The best case explaining what constitutes a successful parody mark is Louis Vuitton Melletier v. Haute Diggety Dog, LLC, a decision of the Fourth Circuit Court of Appeals in 2007. “Louis Vuitton” is a famous maker of top-of-the line ladies handbags, and HDD was using the name “Chewy Vuiton” on dog chew toys. The court found Chewy Vuiton to be a valid parody. A trademark parody is a name that “communicates some articulable element of satire, ridicule, joking, or amusement directed to the original or target mark (or to the original work in the case of a film title or story); the mark has to convey two simultaneous and contradictory messages to be a true parody, namely, that the parody mark is the original name or mark, and also that the parody mark is not the original but is instead a parody, to wit, an irony. The second message has to differentiate from the original in some way and also has to communicate some element of satire, ridicule, joking, or amusement (there has to be an ironic relation between the original and parody mark). The parody has to rely on some difference from the original trademark or original work, presumably a humorous difference, in order to produce the desired effect.
The HDD parody name, “chewy vuiton” worked as parody because it was clearly directed to a dog chew toy (although most dogs I have known will chew on an expensive handbag, given the opportunity). Another good example or a successful parody mark is found in Jordache Enterprises v. Hogg Wyld, where the parody mark was “Lardache” for jeans intended for larger (plus-size) ladies’ jeans, and thus a parody of “Jordache”.
Parody is not an absolute defense to trademark infringement, and all the usual likelihood-of-confusion factors have to be considered. Some examples where the parody doctrine did not save the second comer include “Just Jesu It” vs Nike’s “Just Do It” trademark, both for performance apparel, Nike v. Maher (T.T.A.B. 2011); “North Face” vs. “South Butt” in North Face Apparel v. South Face LLC (settled before trial) both for outdoor apparel, and “Crackberry” and “Blackberry” both for smartphones and related products, Research in Motion v. Defining Presence Marketing Group (TTAB 2012).
Parody seems also to be a useful, if not absolute, defense to trademark dilution. As for “dilution” in the case of parody marks, a strong target mark’s fame and popularity is precisely the mechanism by which likelihood of confusion is avoided. That is, an intent to parody is per se not an attempt to deceive the public. The very strength of the famous target trademark (or other famous name) is what allows the consumers immediately to perceive the target of the parody, while simultaneously allowing the consumer to recognize changes in the mark or name, changes that make the parody mark funny or biting. Parodies aimed at the target mark actually increase the fame and distinctiveness of the target mark, which is he opposite of dilution.
So, in essence, a parody mark can be used so long as it is a “take-off” and not a “rip-off.”