Trademark Parody and Copyright Fair Use

The Second Circuit affirmed a district court ruling granting summary judgment to My Other Bag, Inc., owner of MY OTHER BAG, against Louis Vuitton.  My Other Bag are handbags that on one side show pictures of famous handbags, such as those of Louis Vuitton, and on the other side had the words “My Other Bag”.  Louis Vuitton had sued My Other Bag, Inc. for trademark infringement, dilution by blurring, and copyright infringement.

The lower court held that My Other Bag’s use was parody stating “MOB’s use of Louis Vuitton’s marks in service of what is an obvious attempt at humor is not likely to cause confusion or the blurring of the distinctiveness of Louis Vuitton’s marks; if anything, it is likely only to enforce and enhance the distinctiveness and notoriety of the famous brand”.  The court also rejected the copyright claim on the basis of fair use.

The Second Circuit affirmed that the MOB marks were parodies.  The higher court stated “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.”  The court distinguished this case from other cases, such as STARBUCKS v. CHARBUCKS, where CHARBUCKS was used to identify a type of coffee that would compete with STARBUCKS at the same level and quality.

With respect to the copyright claim, the court held that MOB was a transformative and non-infringing use as the bags were a “new expression and message.”

TTAB Rules Little Caesars DEEP!DEEP! DISH Descriptive

Little Caesars restaurant attempted to register its DEEP!DEEP! DISH trademark for pizza.  The company conceded that “Deep Dish” was a descriptive term for pizza.  It claimed, however, that the mark had acquired distinctiveness and was part of a family of marks that reinforced its acquired distinctiveness.

Little Caesars argued that its burden to prove acquired distinctiveness should be lower since the mark is a unitary phrase with a different commercial impression than the words do separately.  The company claimed that the repetition of the word Deep, with the explanation point.

The company also relied on the “family of marks” doctrine which would expedite the public’s recognition of a mark that shares a similar characteristic as another mark.

The Trademark Trial and Appeal Board (TTAB) held that:

“in an ex parte proceeding under Section 2(f), an applicant may adduce, and an examining attorney must consider, evidence of the existence of a family of marks offered to help prove acquisition of distinctiveness for a new member of the putative family.”  The board stated that Little Caesers had failed to prove the elements necessary to establish a family of marks:

  1.  that the mark shares recognizable common characteristics with the family;
  2. that the mark is distinctive;
  3. that the mark has been promoted in such a way as to create “recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods or services.”

The Board held that repetition of a descriptive word with an exclamation point  was too abstract to constitute a common characteristic with a family of marks.  The Board stated that to recognize such a family of marks would “effectively grant Applicant an exclusive proprietary right to an unbounded variety of merely descriptive double word marks”, making it similar to a Phantom Trademark, which is a mark that incorporates an element that is subject to change, such as the date, a geographic location, or a model number.  An example of a Phantom Trademark is the FOR DUMMIES set of books.

With respect to the distinctiveness of the DEEP!DEEP! DISH mark, the Board found that the family claimed by Little Caesars did not repeat an element already recognized by consumers as indicating source, but merely repeated common descriptive words in relation to pizza.

With respect to the promotion factor, the Board found that despite Little Caesars having provided evidence of promotion since 1980, the promotion only showed the popularity of its products and not an indication of consumer recognition of the marks as source indicators.  The advertisements provided by the company also contained other trademarks which made it impossible for the Board to know the extent to which the advertising benefitted the DEEP!DEEP! DISH trademark or the other trademarks also listed in the advertisements.