Trademarks Class 17

1. Trademarks Class 17 Dilution by blurring and tarnishment Parody and dilution

2. Starbucks v. Wolfe’s: packaging renders marks dissimilar “The Charbucks line of products are presented as either ‘Mister Charbucks’ or ‘Charbucks Blend’ in packaging that displays the ‘Black Bear’ name in no subtle manner, and the packaging also makes clear that Black Bear is a ‘Micro Roastery’ located in New Hampshire.” [4-5]

3. Not very similar

4. Prefix or suffix lessens similarity “[I]t was not clearly erroneous for the District Court to find that the ‘Mister’ prefix or ‘Blend’ suffix lessened the similarity between the Charbucks Marks and the Starbucks Marks in the court’s overall assessment of similarity.” [5]

5. No bad faith requirement “The determination of an ‘intent to associate,’ however, does not require the additional consideration of whether bad faith corresponded with that intent. The plain language of section 1125(c) requires only the consideration of ‘[w]hether the user of the mark or trade name intended to create an association with the famous mark.’ ” [7]

6. The right survey question? “The more relevant question, for purposes of tarnishment, would have been how a hypothetical coffee named either ‘Mister Charbucks’ or ‘Charbucks Blend’ would affect the positive impressions about the coffee sold by Starbucks.” [8]

7. Visa v. JSL “When a trademark is also a word with a dictionary definition, it may be difficult to show that the trademark holder’s use of the word is sufficiently distinctive to deserve anti-dilution protection because such a word is likely to be descriptive or suggestive of an essential attribute of the trademarked good.” [2]

8. Descriptive use isn’t dilutive “Visa does not claim that it could enforce its Visa trademark to prevent JSL from opening ‘Orr’s Visa Services,’ any more than Apple could shut down Orr’s Apple Orchard or Camel could fold up Orr’s Camel Breeders. Visa doesn’t own the word ‘visa’ and may not ‘deplete the stock of useful words’ by asserting otherwise.” [3]

9. V Secret v. Mosely “[T]he new Act creates a kind of rebuttable presumption, or at least a very strong inference, that a new mark used to sell sex-related products is likely to tarnish a famous mark if there is a clear semantic association between the two.” [1]

10. Dissent: no justification to shift burden of proof “I certainly recognize that Congress changed the law concerning dilution in response to the Supreme Court’s decision in Moseley, but the Supreme Court in Moseleysaid nothing about changing the party bearing the burden of proof and neither does the amended statute. . . .” [6]

11. Dissent: Victoria’s Secret not tarnished by association with sex “Nor can the court ignore the character of the senior mark when applying the majority’s ‘rule.’ Victoria’s Secret sells women’s lingerie, and, as Victoria’s Secret readily admits, its own mark is already associated with sex, albeit not with sex novelties.” [7]

12. Tarnishment? Victor’s BIG Secret Plus Size Shoppes

15. Louis Vuitton v. Haute Diggity Dog “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. 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.” [526]

16. Strong mark lessens confusion in a parody “While it is true that finding a mark to be strong and famous usually favors the plaintiff in a trademark infringement case, the opposite may be true when a legitimate claim of parody is involved. As the district court observed, ‘In cases of parody, a strong mark’s fame and popularity is precisely the mechanism by which likelihood of confusion is avoided.’ ” [528]

17. Similarity of marks is okay in a parody “Haute Diggity Dog concedes that its marks are and were designed to be somewhat similar to LVM’s marks. But that is the essence of a parody—the invocation of a famous mark in the consumer’s mind, so long as the distinction between the marks is also readily recognized.” [528]

18. Intent to parody isn’t intent to confuse “As other courts have recognized, ‘An intent to parody is not an intent to confuse the public.’ 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 the products.” [530]

19. Parody = non-diluting? “In short, as Haute Diggity Dog’s ‘Chewy Vuiton’ marks are a successful parody, we conclude that they will not blur the distinctiveness of the famous mark as a unique identifier of its source.” [533]