Thursday, January 20, 2022

TTABlog Test: Is PISSTERINE Confusable with LISTERINE for Mouthwash?

J & J opposed an application to register the proposed mark PISSTERINE for non-medicated mouthwash, claiming likelihood of confusion with, and likely dilution of, its registered mark LISTERINE for, inter alia, medicated mouthwash, toothpaste, and dental floss. J & J established that its mark is famous for Section 2(d) purposes. The goods are overlapping or related, but what about the marks? What about parody? Johnson & Johnson v. Pissterine, LLC, Opposition No. 91254670 (January 18, 2022) [not precedential] (Opinion by Judge Jyll Taylor).

Applicant did not dispute that LISTERINE does not describe or suggest any characteristics or qualities of J & J's goods. The inspiration for the term LISTERINE came from an English doctor, Joseph Lister, the first surgeon to perform an operation in a chamber sterilized with antiseptics." The Board found the mark to be arbitrary, inherently distinctive, and conceptually strong.

As to commercial strength, the LISTERINE product has been marketed continuously since 1879. J & J's advertising and sales figures were "quite impressive." The Board found the mark to be famous for oral care products and services. 

Turning to the marks, the Board noted that famous marks merit a broader scope of protection than other marks. The Board found the involved marks to be visually similar: one -word terms ending in "ERINE." The other letters "do little to distinguish the marks' appearance."

As to sound, the marks have "the same three-syllable cadence, with a rhyming first syllable and identical following syllables." As to meaning, both marks appear to be arbitrary.

Nonetheless, given the fame of Opposer’s LISTERINE mark(s) and the similarities between the marks in appearance and sound, we find the marks in their entireties to be similar.

Applicant did not submit any testimony or evidence, nor did it file a brief. In its answer, however, it did raise the issue of parody, claiming no likelihood of confusion and fair use. The Board observed that "Applicant's intention for its mark to be a parody does not necessarily negate a finding of likelihood of confusion." In short, "parody is not a defense if the marks would otherwise be considered confusingly similar." Nike, Inc. v. Maher, 100 USPQ2d 1018, 1023 (TTAB 2011) . 

J & J claimed that, under the 13th DuPont factor, the Board should find bad faith on the part of the applicant. The Board, however, pointed out that a parody "by its very nature is an attempt to create an association in the form of an outlandish imitation." 

And so, the Board concluded that the applicant's intention to create a parody, by itself, did not evidence an intention to trade on the goodwill of the LISTERINE mark. And so, the Board sustained J & J's Section 2(d) likelihood of confusion claim. It declined to reach the dilution-by-blurring claim.

Read comments and post your comment here.

TTABlogger comment: Do you really think consumers would believe PISSTERINE emanated from, or was licensed or approved by, the source of LISTERINE? I think LISTERINE qualifies as famous for purposes of dilution; a good example of a "household word." The Board should have gone the dilution-by-blurring route. As for dilution-by-tarnishment, better to avoid the potential constitutionality issue there.

Text Copyright John L. Welch 2022.


At 8:18 AM, Anonymous Anonymous said...

John, I wholly agree -- no consumer is ever really going to be confused here and, assuming J&J actually submitted the evidence to show dilution-level fame, dilution would have been an easier route here. The dilution statute even contains a carve-out that arguably eliminates parody as a defense as a matter of law. See 15 U.S.C. § 1125(c)(3)(A) ("Any fair use, ... of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with..."). As Pissterine applied for a registration, as a matter of law it is seeking to use the mark as a "designation of source for the person's own goods."

Also, did you find it odd that in 2022 the TTAB needed to turn to a dictionary for a definition of "parody"? Isn't there a case to cite?

At 8:56 AM, Anonymous Anonymous said...

Agreed with the TTABlogger that the Board should have discussed the dilution claim

At 10:20 AM, Anonymous Anonymous said...

Query whether dilution by tarnishment can survive a First Amendment challenge after Tam and Brunetti injected that clause with steroids.

At 10:47 AM, Anonymous Anonymous said...

Isn't this a textbook case of dilution by tarnishment?

Either way, the Board saw an applicant who had already left the building, and they took the easiest and most non-appealable route out of there.

FWIW, Listerine is certainly famous in my mind. What American adult doesn't know Listerine?

At 11:24 AM, Blogger Scott Brown said...

This should really be going viral, at least in the trademark world. Absolutely absurd use of time and money.

At 5:38 PM, Blogger Valerie N said...

Someone close to me used to work with Warner Lambert where Listerine was first developed. Apparently the original color was yellow and the people in the lab jokingly referred to it as "Pissterine" back then.


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