Brief Fact Summary. Louis Vuitton Malletier S.A. (LVM) (Plaintiff), a manufacturer of luxury goods, claimed that Haute Diggity Dog, LLC (Defendant), a pet products manufacturer, among other things, diluted Plaintiff’s trademarks by creating and selling a line of â€œChewy Vuitonâ€ dog chew toys that spoofed Plaintiff’s handbags and trademarked designs.
Synopsis of Rule of Law. (1) Trademark dilution by blurring does not occur under the Trademark Dilution Revision Act of 2006 where a famous and distinctive mark is parodied, but the mark is only mimicked and not actually used.Â (2) Trademark dilution by tarnishment does not occur under the Trademark Dilution revision Act of 2006 where harm to a famous mark is only speculative and without record support.
Issue. (1) Does trademark dilution by blurring occur under the Trademark Dilution Revision Act of 2006 where a famous and distinctive mark is parodied, but the mark is only mimicked and not actually used?Â (2) Does trademark dilution by tarnishment occur under the Trademark Dilution revision Act of 2006 where harm to a famous mark is only speculative and without record support?
Held. (1) No.Â Trademark dilution by blurring does not occur under the Trademark Dilution Revision Act of 2006 where a famous and distinctive mark is parodied, but the mark is only mimicked and not actually used.Â To state a dilution claim under the TDRA, a plaintiff must show: (1) that the plaintiff owns a famous mark that is distinctive; (2) that the defendant has started using a mark in commerce that allegedly is diluting the famous mark; (3) that a similarity between the defendant’s mark and the famous mark gives rise to an association between the marks; and (4) that the association is likely to impair the distinctiveness of the famous mark or likely to harm the reputation of the famous mark.Â In the context of blurring, distinctiveness refers to the ability of the famous mark uniquely to identify a single source and thus maintain its selling power.Â In this case, the only statutory factor at issue is the fourth factor—whether the association between Haute Diggity Dog’s (Defendant) marks and LVM’s (Plaintiff) marks will impair the distinctiveness of Plaintiff’s marks.Â Plaintiff suggests that any use by a third person of an imitation of its famous marks dilutes the famous marks as a matter of law.Â However, this interpretation goes too far.Â The TDRA has six statutory factors that must be taken into consideration when determining if a junior mark has diluted a famous mark, but the district court did not consider these.Â The factors are: (i) The degree of similarity between the mark or trade name and the famous mark.Â (ii) The degree of inherent or acquired distinctiveness of the famous mark.Â (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.Â (iv) The degree of recognition of the famous mark.Â (v) Whether the user of the mark or trade name intended to create an association with the famous mark.Â (vi) Any actual association between the mark or trade name and the famous mark.Â Although the district court erred when it did not consider these factors, when they are considered, the conclusion is the same as that reached by the district court.Â Under the TDRA, which provides that fair use is a complete defense, parody is not automatically a complete defense to a claim of dilution by blurring where the defendant uses the parody as its own designation of source, i.e., as a trademark.Â Nevertheless, a court is directed by the TDRA to consider all relevant factors, so that a court may take into account the existence of a parody that is used as a trademark as part of the circumstances to be considered.Â A defendant’s use of a mark as a parody is relevant to the overall question of whether the defendant’s use is likely to impair the famous mark’s distinctiveness, as well as to several of the listed factors.Â Regarding the fifth and sixth factors, a parody intentionally creates an association with the famous mark in order to be a parody, but also intentionally communicates, if it is successful, that it is not the famous mark, but rather a satire of the famous mark.Â The first, second, and fourth factors are also directly implicated when the defendant’s use of the mark is a parody.Â In fact, a successful parody may render the famous mark even more distinctive.Â Thus, while a defendant’s use of a parody mark is likely to impair the distinctiveness of the famous mark.Â It is undisputed that Plaintiff’s marks are distinctive, famous and strong—even iconic.Â Accordingly, because these famous marks are particularly strong and distinctive, it becomes more likely that a parody will not impair their distinctiveness.Â That is the case here; because Haute Diggity Dog’s (Defendant) â€œChewy Vuitonâ€ marks are a successful parody, they will not blur the distinctiveness of the famous marks as a unique identifier of their source.Â While this might not be true if the parody is so similar to the famous mark that it could likely be construed as actual use of the famous mark itself, Defendant in this case mimicked the famous marks; it did not come so close to them as to destroy the success of its parody and, ore importantly, to diminish the Plaintiff marks’ capacity to identify a single source.Â The imitations by Defendant are intentionally imperfect to clearly represent a parody.Â Defendant intentionally associated its marks, but only partially and imperfectly, so as to convey the simultaneous message that it was not in fact a source of Plaintiff products.Â Rather, as a parody, it separated itself from the Plaintiff marks so as to make fun of them.Â When all these factors are taken into consideration, clearly the distinctiveness of Plaintiff’s marks will not likely be impaired by Defendant’s marketing and sale of its â€œChewy Vuitonâ€ products.Â As to this issue, affirmed.
(2) No. Trademark dilution by tarnishment does not occur under the Trademark Dilution revision Act of 2006 where harm to a famous mark is only speculative and without record support.Â To establish dilution by tarnishment, Plaintiff must prove that Defendant’s use of the â€œChewy Vuitonâ€ mark on dog toys actually harmed the reputation of Plaintiff’s marks.Â The only argument Plaintiff makes in this regard is that a dog could choke on a â€œChewy Vuitonâ€ toy, but presents no evidence that a dog has ever choked on one of these toys or that there is a likelihood that a dog ever will.Â Therefore, Plaintiff failed to demonstrate a claim for dilution by tarnishment.Â As to this issue, affirmed.
Discussion. One of the effects of the Trademark Dilution Revision Act of 2006 was to overturn the Supreme Court decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003), which had held a plaintiff needed to prove actual dilution under the Federal Trademark Dilution Act (FTDA).Â The TDRA revised the FTDA so that a plaintiff needs only to demonstrate the defendant’s mark is likely to cause dilution, therefore facilitating claims for dilution brought by owners of famous marks.Â However, the TDRA also limited famous marks to those that are â€œwidely recognized by the general consuming public of the United Statesâ€ and abolished the concept of niche fame, therefore reducing how many dilution claims could be successfully brought.