Friday, June 09, 2023

Parody at the TTAB: Does the Supreme Court's "Bad Spaniels" Ruling Change the Game?

You may have heard that the Supreme Court issued its decision in the "Bad Spaniels" case yesterday [pdf here], vacating the Ninth Circuit's decision that, inter alia, had immunized VPI from trademark infringement under Rogers v. Grimaldi. The Court ruled that, since VPI was (concededly) using its comedic design as a source indicator, Rogers did not apply. Therefore, the Ninth Circuit was wrong in reversing the district court's finding of likelihood of confusion.

However, the Court also said that the comedic nature of the dog toy should be taken into account in the likelihood-of-confusion analysis:

Yet to succeed, the parody must also create contrasts, so that its message of ridicule or pointed humor comes clear. And once that is done (if that is done), a parody is not often likely to create confusion. Self-deprecation is one thing; self-mockery far less ordinary. So although VIP’s effort to ridicule Jack Daniel’s does not justify use of the Rogers test, it may make a difference in the standard trademark analysis.

Consider, now, the TTAB's treatment of the parody defense. The Board has long held that parody is a viable defense in a likelihood of confusion analysis only if the involved marks are otherwise not found confusingly similar. See Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1592 (TTAB 2008) (“In finding that the marks are not similar, we have given no weight to applicant's argument that his mark is a parody. Parody is not a defense if the marks would otherwise be considered confusingly similar.”); Nike, Inc. v. Maher, 100 U.S.P.Q.2d 1018, 1023 (TTAB 2011) (“[P]arody is not a defense if the marks would otherwise be considered confusingly similar.”)

So now what will the Board do? Will it continue to give "no weight" to parody? Will it follow the Court's lead? Does it have to?

Read comments and post your comment here.

Text Copyright John L. Welch 2023.


At 9:39 AM, Anonymous Tal S. Benschar said...

The Court's decision is found the Rogers v. Grimaldi doctrine inapplicable when the defendant is using the parody as a mark, or source indicator. As you note, the defendant conceded -- in fact asserted -- that it was using the design as a mark. Now the interesting thing is that the defendant has a house mark, Silly Squeakers, which it uses as the mark for a whole line of parody doggie toys. From the opinion:

VIP is a dog toy company, making and selling a product line of chewable rubber toys that it calls “Silly Squeakers.” (Yes, they squeak when bitten.) Most of the toys in the line
are designed to look like—and to parody—popular beverage brands. There are, to take a sampling, Dos Perros (cf. Dos Equis), Smella Arpaw (cf. Stella Artois), and Doggie Walker
(cf. Johnnie Walker). VIP has registered trademarks in all those names, as in the umbrella term “Silly Squeakers.”

What really is the indicator of source here? Silly Squeakers, the name of the line of doggie toys. Is each individual name really a trademark, or is it just the parody or parodic message? To use a Trademark Office query, do the individual designs "function as a mark?"

Imagine that someone made a line of T-shirts with all kinds of funny or parodic content, and called it Silly-Ts. That name would likely qualify as a mark. Would the designs in each shirt qualify? I think the PTO would reject those for failure to function.

Given this decision, going forward it would make more sense for a company like VIP to just claim trademark rights in the name of the product line, and that the individual designs are just the parodic content. (They might qualify for copyright protection, which is a different right.)

And in future litigations, defendants will be asserting that the parody is not meant to be a mark, to avoid the holding of this decision.

At 11:12 AM, Blogger Eddie said...

What? There's absolutely nothing confusing at all between Jack Daniels and Bad Spaniels

At 12:25 PM, Anonymous Anonymous said...

Next stop, gutting 2(a)(further) and 2(c), and probably upholding the Comstock Act against gynecologists. The Court has no legitimacy…or sense of humor, at this point.

At 2:13 PM, Anonymous Andrew Dhuey said...

Initial confusion is often what makes for great parody. The Onion filed a brilliant amicus brief on this last year:

From the Table of Contents:

I. Parody Functions By Tricking People Into
Thinking That It Is Real ........................... 4
II. Because Parody Mimics “The Real Thing,”
It Has The Unique Capacity To Critique
The Real Thing .......................................... 8
III. A Reasonable Reader Does Not Need A
Disclaimer To Know That Parody Is
Parody ........................................................ 10
IV. It Should Be Obvious That Parodists
Cannot Be Prosecuted For Telling A Joke
With A Straight Face ................................. 15

It's hard to square the purposes of parody with a traditional trademark likelihood-of-confusion analysis.


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