Thursday, December 03, 2015

Parody "Defense" Fails to Stop Section 2(d) Refusal of "MY OTHER BAG ..." for Parodic Tote Bags

The Board affirmed a refusal to register the mark MY OTHER BAG ... for "parodic canvas tote bags screen-printed with an artist's cartoonish rendering of a well-known designer handbag," finding the mark to be confusingly similar to the registered mark THE OTHER BAG BY ALDO for hand bags, carry-all bags, and the like [BAG disclaimed in both marks]. Applicant maintained that confusion is unlikely because its mark is a "tongue-in-cheek statement" by the person carrying the bag that while it "may not have cost me a fortune, 'My Other Bag ...' may have." The Board was unimpressed. In re My Other Bag Inc., Serial No. 85521133 (November 16, 2015) [not precedential].

The fact that a mark is intended to be a parody is not, by itself, sufficient to avoid a likelihood of confusion refusal. "Parody is a potential defense only if the involved marks would otherwise not be found confusingly similar." [If that's the test, then the parody defense isn't needed - ed.]. The Board found nothing in the record to show why applicant's supposed parody should trump the likelihood of confusion as to source.

Moreover, applicant's limitation to the identification of goods is "futile." Consumers are not privy to applicant's intention as stated in the application, and the limiting language is not "binding" on consumers. [See the recent "" decisions].

Turning to the likelihood of confusion analysis, the Board found the initial phrase THE OTHER BAG to be the dominant feature of the registered mark. BY ALDO is likely to be considered a tag line or house mark. Both of the involved marks include the term OTHER BAG, and thus both marks imply "that their respective bags are distinct from a previously known bag, as if to say - 'not this one, but that one.'" Although the marks are different in sight and sound, there are similarities in connotation and overall commercial impression. The Board concluded that this first du Pont factor weighs in favor of a likelihood of confusion finding.

The goods of applicant and registration are "highly similar in nature, if not identical." Registrant's goods encompass applicant's more narrowly identified goods. Moreover, the goods of the registration "are unrestricted," and therefore may include "parodic" designs similar to those displayed on applicant's goods. In short, the Board found the involved goods to be related, and it concluded that the second du Pont factor points toward a finding of likely confusion.

The Board held that there is a likelihood of confusion between the two marks, and it affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: Seems to me that the parodic nature of the mark should be taken into account as part of the 2(d) analysis. It makes no sense to me to say that before considering parody, one first decides whether there is a likelihood of confusion.

Text Copyright John L. Welch 2015.


At 9:38 AM, Anonymous Anonymous said...

If the Federal Circuit comes out against Section 2(a) disparagement in the Tam/Slants case on the grounds that denying the benefits of registration may infringe an Applicant's First Amendment rights, does that change the Board's approach to parody under Section 2(d)?


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