Trademark Parody at the Trademark Trial and Appeal Board

Reprinted with permission from The Legal Intelligencer, Copyright 2024 ALM Media Properties, LLC. Further duplication without permission is prohibited. All rights reserved.

While most trademark lawyers are familiar with the “Bad Spaniels” and “Chewy Vuitton” cases on trademark parody in federal court, decisions of the USPTO’s Trademark Trial and Appeal Board (TTAB) on trademark parody marks have rarely been examined. The U.S. Court of Appeals for the Fourth Circuit determined that “Chewy Vuitton” dog toys effectively parodied the iconic “Louis Vuitton” luxury handbags. See Louis Vuitton Malletier v. Haute Diggity Dog, 507 F.3d 252 (4th Cir. 2007) (hereinafter Chewy). The court found no likelihood of confusion, emphasizing that “an effective parody will actually diminish the likelihood of confusion.” Over a decade later, the U.S. Supreme Court stated that the First Amendment does not grant trademark parodies a safe harbor from infringement claims. See Jack Daniel’s Properties v. VIP Products, 599 U.S. 140 (2023).

But how does the TTAB evaluate applications for registration of parody marks? To analyze this issue, we conducted a search of all TTAB proceedings discussing “parody.” Subsequently, we narrowed the results to include only parodies being used as a “source identifier”—indicating that the parody serves as “a designation of source for the person’s own goods or services.” See DC Comics v. Gotham City Networking, 2012 TTAB LEXIS 196, at *11 (TTAB 2012).

In ex parte proceedings, we found that the TTAB has consistently affirmed the examiner’s refusal to register parody marks. For example, in In re My Other Bag, 2015 TTAB LEXIS 469 (TTAB 2015), the applicant’s parody defense was unsuccessful in securing registration. The examiner had rejected the application of the mark “My Other Bag” for tote bags as confusingly similar to the mark “The Other Bag by Aldo,” also for tote bags. The applicant claimed its mark was a parody. First, the TTAB analyzed the similarities of the marks, finding them similar in “connotation” and “overall commercial impression—the first DuPont factor. Second, the TTAB compared the goods identified in the applicant’s application to those identified in the cited registration, determining the tote bags were “highly similar in nature, if not identical”—the second du Pont factor. The TTAB appeared to ignore the parody defense, focusing instead on the similarities in the marks and the goods. Since both were similar, registration was refused. Similarly, in inter partes proceedings, the TTAB has consistently sustained oppositions when a parody mark is opposed. For example, in Johnson & Johnson v. Pissterine, 2022 TTAB LEXIS 24 (TTAB 2022), the TTAB sustained the opposition and refused registration of the mark “Pissterine” despite the applicant’s contention its mark was a parody of the opposer’s mark “Listerine.” The TTAB went through its standard likelihood of confusion analysis, finding the marks both visually and aurally similar. The TTAB found the products—mouthwash—to be identical. Again, the TTAB accorded no weight to the mark being a parody and found a likelihood of confusion.

In another example, the TTAB found a likelihood of confusion between the opposer’s mark “Cards Against Humanity” and the applicant’s parody mark “Crabs Adjust Humidity.” See Cards Against Humanity v. Vampire Squid Cards, 2019 TTAB LEXIS 187 (TTAB 2019). Although acknowledging the viability of a parody defense in a likelihood of confusion analysis, the TTAB determined that a likelihood of confusion existed because the marks were similar and were used for identical products—card games. The applicant argued that the similarity in impression was intentional as it constituted the essence of parody, invoking the Chewy Vuitton decision.

However, the TTAB clarified that parody serves as a viable defense in a likelihood of confusion analysis only if the involved marks are otherwise not found confusingly similar. It reasoned that confusion was unlikely in the Chewy Vuitton case because dog chew toys are very different from high-end handbags. In other words, the goods were different. But in the Cards/Crabs case, the goods were the same—card games—so a likelihood of confusion was found.

In another parody case, the TTAB refused registration of the mark “Hater-Aid” in an opposition brought by the owner of the parodied-mark “Gatorade.” See Stokely-Van Camp v. Wooten, 2009 TTAB LEXIS 151 (TTAB 2009). The TTAB found that, even assuming the opposed mark was a parody of the registered mark, the parody was not sufficient to prevent likelihood of confusion because the marks were similar and the goods were the same—sports drinks. This rationale paralleled that of the Cards Against Humanity opposition—where the marks are similar and the goods are the same, a likelihood of confusion is found, regardless of parody.

Overall, the TTAB tends to reject registration of parody marks. Out of 30 cases analyzed, not one favored the parody mark. However, in all of the cases reviewed, the goods were the same or closely similar. In these instances, the TTAB does not appear to appreciate the joke—the likelihood of confusion analysis will be strictly followed and the parody mark will be rejected if the goods are similar. Since the mark is a parody of the registered mark, the mark will necessarily be similar to the registered mark; so the first factor will always be satisfied. Thus, the focus for applicants should be on the goods, and if they are the same as the mark being parodied, registration seems unlikely.

But what if the goods are not the same? For example, what if the registered goods are handbags and the goods in the application for the parody mark are dog toys, as in the Chewy Vuitton case? We found no TTAB case law on this point. Perhaps these marks do not make it to the TTAB because examiners are not refusing registration due to differences in the goods (ex parte) or because trademark owners are not as concerned since the goods are different (inter partes).

But if this issue eventually does make its way to the TTAB, it will be interesting to see if the TTAB gets the joke and allows registration. If the current case law is any guide, the TTAB is likely to perform its standard likelihood of confusion analysis, without regard to the parody, and focus on the similarity of the marks and the similarity of the goods. Again, the marks will necessarily be similar, since one is a parody of the other. (Said another way, if the marks are not similar, then it’s not a parody!) The TTAB will then analyze the similarity of the goods, and if they are sufficiently different, registration may be allowed. But if the goods are too close, registration is likely to be denied. Either way, the applicant’s parody defense may well fall on deaf ears.

Susan A. Smith, a partner with Ballard Spahr, is an experienced intellectual property counselor and litigator who advises some of the world’s leading brands on all phases of trademark representation. Doyle S. Tuvesson is an associate in the firm’s intellectual property department.