The TDRA and Being “Famous” – by “Misbah U”

The Trademark Dilution Revision Act of 2006 (TDRA) was signed in 2006 by President Bush as an amendment to the Federal Trademark Dilution Act of 1995;  it further clarified the standard proof trademark owners must meet in order to claim dilution of the famous TM, how use by another can “dilute” a trademark, and finally, it made it easier for owners to prove dilution.

Specifically, the TDRA defined a trademark to be “famous” if it is “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.” The owner of such a famous TM can thus prevent its use by others that can be proven to be “diluting” the mark. Diluting, under the TDRA, occurs when the famous mark is “blurred” or “tarnished” as a result of an “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” Essentially, with this Act, it was made clear that owners can stop potential dilution without showing that the current diluting use is actually causing harm.

Recently, trademark parodies have been at the forefront of cases involving the TDRA. In my opinion, despite further specifying the original Federal Trademark Dilution Act, courts remain conflicted and inconsistent when it comes to interpreting the TDRA—especially when it comes to trademark parodies which, naturally, aim to reference prominent trademarks.

For example, with the Louis Vuitton Malletier, S.A. v. Haute Diggity Dog (4th circuit, 2007) case, Louis Vuitton, a manufacturer of high end luxury luggage, leather products, and other accessories, claimed trademark infringement and dilution against Haute Diggity Dog because of its Chewy Vuiton plush dog toys that were modeled after the LV handbag. Here, despite acknowledging that Chewy Vuiton had indeed based their design and name off of Louis Vuitton, the Court went on to find that Haute Diggity Dog was actually engaged in a successful parody, and, as intended, it would be perceived as such:

“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 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.”

Similarly, with the Charbucks case (Starbucks Corp. v. Wolfe’s Borough Coffee Inc.), the Second Circuit found there was no likelihood of dilution—even though Starbucks claimed that Charbucks for coffee products was likely to blur the distinctiveness and/or harm Starbucks’ reputation. This decision was heavily based on the TDRA. Interestingly, when weighing the degree of similarity, the court stated that the marks be substantially similar (and thus created a new requirement) in order to attain protection against dilution via blurring. Moreover, in terms of the “intent to create an association,” the court accounted for bad faith when it came to determining whether there was an actual intention behind unlawfully associating with a well-known trademark.   At the end of day, despite Starbucks’ appeal Charbucks wasn’t found to be likely of diluting the Starbucks TM.

With Hershey Co. v. Art Van Furniture, Inc., however, Michigan’s largest furniture retailer, Art Van began an online campaign where visitors could vote for their favorite couch design—one of which happened to be a brown sofa, emerging from a wrapper, with “ART VAN” centered across. Hershey decided to file a lawsuit claiming that it’s chocolate bar packaging was being diluted and infringed upon. Art Van, of course, argued that this was merely a parody and its amusing nature would therefore diffuse any risk of it being mistaken as a sponsorship, for example. Fortunately for famous TM owners here, the district court rejected the parody defense (differing it from Chewy Vuiton mentioned above) by stating that Michigan retailer’s design was “neither similar nor different enough to convey a satirical message…it’s not biting.” Thus, playing on someone else’s trademark as a parody is by no means a guaranteed defense.

As of November 2010, I think Facebook vs. Lamebook is one case that will be particularly interesting to follow given past cases where parodies have been established as defense.  Lamebook.com is a parody compendium of funny facebook content that recently decided to sue Facebook.com in the federal district court of Western Texas, after seeking 1st amendment protections, so that Facebook couldn’t go ahead and file against them first. Facebook, however, ignored this and filed an infringement and dilution suit in Northern California. Only time will tell how the parody defense will play out here—and if privacy issues, which haven’t been addressed by either side as of yet, are raised (even though Lamebook obscures identifying information).