Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`91191947
`
`Plaintiff
`HLT Domestic IP LLC
`
`JESSICA E LEWIS
`ALSTON & BIRD LLP
`ONE ATLANTIC CENTER, 1201 W PEACHTREE STREET
`ATLANTA, GA 30309-3424
`UNITED STATES
`david.stewart@a|ston.com
`
`
`
`Reply in Support of Motion
`Jessica E. Lewis
`
`Jessica.|ewis@a|ston.com
`
`/jessica e. Iewisl
`09/29/2011
`
`32873658_4.pdf (48 pages )(2050388 bytes)
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA433131
`ESTTA Tracking number:
`09/29/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91191947
`Plaintiff
`HLT Domestic IP LLC
`JESSICA E LEWIS
`ALSTON & BIRD LLP
`ONE ATLANTIC CENTER, 1201 W PEACHTREE STREET
`ATLANTA, GA 30309-3424
`UNITED STATES
`david.stewart@alston.com
`Reply in Support of Motion
`Jessica E. Lewis
`jessica.lewis@alston.com
`/jessica e. lewis/
`09/29/2011
`32873658_4.pdf ( 48 pages )(2050388 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of U.S. Application Serial No. 77/633,434
`Mark: WOOFDORF-ASTORIA DOG HOTEL & DAY SPA
`Filing Date: December 15, 2008
`Published: March 17, 2009
`
`HLT Domestic IP LLC
`
`Opposer,
`
`v.
`
`ERIC MARCUS,
`
`Applicant.
`
`Opposition No. 91191947
`
`OPPOSER’S REPLY BRIEF IN SUPPORT OF ITS
`MOTION FOR SUMMARY JUDGMENT
`
`Opposer HLT Domestic IP LLC (“Hilton”) files this Reply Brief in further support of its
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`Motion for Summary Judgment on its trademark dilution claim under the Trademark Dilution
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`Revision Act (“TDRA”). Applicant contends in his response brief that his mark is a parody of
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`Hilton’s famous WALDORF ASTORIA mark and thus is not actionable under the TDRA.
`
`Applicant’s mark does not qualify as a legally defensible parody because: (1) it does not
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`comment upon or criticize Hilton or its services; and (2) Applicant is using the mark as a source
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`identifier for his own services. For these reasons and the reasons set forth more fully below,
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`Hilton submits that it should be granted summary judgment on its dilution claim.
`
`ARGUMENT AND CITATION OF AUTHORITY
`
`The Board considers three elements when evaluating a claim under the TDRA: (1)
`
`whether the opposer’s mark is famous; (2) whether the opposer’s mark became famous prior to
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`the applicant’s use of its mark; and (3) whether the applicant’s mark is likely to blur the
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`distinctiveness of the opposer’s famous mark. See Nat’l Pork Bd. & Nat’l Pork Producers
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`

`
`Council v. Supreme Lobster & Seafood Co., 96 U.S.P.Q. 2nd 1479 (T.T.A.B. 2010); 15 U.S.C. §
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`1125(c). Applicant concedes in his Response that the WALDORF ASTORIA Mark is famous,
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`stating “opposer’s marks are distinctive famous and strong.” (Applicant’s Response at p. 5).
`
`Applicant does not contest, and thus concedes, that Hilton’s mark was famous prior to his
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`adoption of his own mark. Accordingly, the only issue remaining for the Board to consider is
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`whether Applicant’s mark is likely to blur the distinctiveness of Hilton’s mark.
`
`As set forth in Hilton’s opening brief, the TDRA provides a non-exclusive list of six
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`factors that may be considered in determining whether a junior user’s mark dilutes a famous
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`mark by blurring:
`
`i.
`
`ii.
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`iii.
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`iv.
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`v.
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`vi.
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`the degree of similarity between the mark or trade name and the famous mark;
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`the degree of inherent or acquired distinctiveness of the famous mark;
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`the extent to which the owner of the famous mark is engaging in substantially
`exclusive use of the mark;
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`the degree of recognition of the famous mark;
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`whether the user of the mark or trade name intended to create an association with
`the famous mark; and
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`any actual association between the mark or trade name and the famous mark.
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`With regard to factor (i), Applicant admits that the parties’ marks are similar and that he
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`intended to “mimic” the WALDORF ASTORIA mark. (Applicant’s Response at p. 6).
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`Regarding factors (ii), (iii) and (iv), Applicant acknowledges that Hilton’s mark is “distinctive,
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`famous, and strong…and well known.” (Id. at 5). With respect to factor (v), Applicant concedes
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`that he “intentionally associated [his] mark” with Hilton’s. (Id. at 6). Finally, with regard to
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`actual association, Applicant does not deny the evidence Hilton submitted in connection with its
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`- 2 -
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`

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`opening brief that consumers have actually associated his mark with Hilton’s – as Applicant
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`intended. Accordingly, each of the statutory dilution factors weighs in Hilton’s favor.
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`Applicant’s defense is that his mark is a parody and thus does not dilute Hilton’s famous
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`WALDORF ASTORIA mark. This defense fails as a matter of undisputed fact and law because
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`Applicant’s mark is not a legally cognizable parody. A mark qualifies as a parody only when it
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`serves to hold the trademark owner or its services up to “comment or ridicule.” Elvis Presley
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`Enters. Inc. v. Capece, 141 F.3d 188, 199 (5th Cir. 1998); see also Harley-Davidson, Inc. v.
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`Grottanelli, 164 F.3d 806, 813 (2d Cir. 1999) (“[Defendant’s] mark makes no comment on
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`[Plaintiff’s] mark; it simply uses it somewhat humorously to promote his own products and
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`services, which is not a permitted trademark parody use.”).1
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`In this case, Applicant has conceded that he is not using his mark to comment upon or
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`criticize Hilton or its services. (Deposition of Eric Marcus, April 20, 2011, attached as Exhibit G
`
`to Hilton’s opening brief (“Marcus Dep.”), at 43:5-12). Rather, he adopted his WOOFDORF-
`
`ASTORIA mark to be a humorous reference to Hilton’s Waldorf Astoria hotel that would also
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`trade on the favorable consumer associations of Hilton’s brand. (Marcus Dep. at 41:5-10; 43:5-
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`15; 112:20-24). Specifically, Applicant testified that he adopted his mark because “I was
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`looking for a famous well-known hotel name that would reflect the high quality of service – 5-
`
`star luxury quality of service that we offer and would come across as clever and funny.”
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`(Marcus Dep. at 112:20-24.) Such an attempt to free fide on the consumer goodwill of the
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`1
`These decisions find their genesis in the Supreme Court’s opinion in Campbell v. Acuff-Rose Music, Inc.,
`510 U.S. 569 (1994). In the analogous context of copyright law, the Court defined a parody as a work that, “at least
`in part, comments on that author’s work.” Id. at 580. The court continued that “[i]f on the contrary, the
`commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer
`merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in
`borrowing from another's work diminishes accordingly (if it does not vanish), and other factors, like the extent of its
`commerciality, loom larger.” Id.
`
`- 3 -
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`

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`WALDORF ASTORIA is not a protectable parody. See Nike, Inc. v. Maher, Opposition No.
`
`91188789, #32 at *16 (T.T.A.B. Aug. 9, 2011) (available at
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`http://ttabvue.uspto.gov/ttabvue/v?qt=adv&procstatus=All&pno=9118878) (“Here, applicants
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`are not intending to use their mark to parody or to make any type of social commentary
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`regarding opposer, opposer's famous mark or opposer's goods. Instead, they are seeking to use
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`their mark for religious social commentary, and attempt to take a ‘free ride’ on the mark's
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`association with the famous mark for economic gain. This is not protectable parody.”)
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`Even if the Board were to find that Applicant’s mark is a parody, his use still would not
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`give rise to a valid parody defense. Section 43(c)(3)(A) of the TDRA limits the fair use
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`exclusion for parodies to uses “other than as a designation of source for the person’s own goods
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`or services.” 15 U.S.C. § 1125(c)(3)(A). Because Applicant uses the WOOFDORF-ASTORIA
`
`mark to identify his own services, parody is not a defense to Hilton’s dilution claim as a matter
`
`of law. See Am. Express Mktg. & Dev. Corp. v. Gilad Dev. Corp., 94 U.S.P.Q.2d 1294
`
`(T.T.A.B. 2010); Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 107 (2d Cir.
`
`2009).
`
`Applicant cites to several cases in which trademark dilution claims were denied on
`
`parody grounds as support for his application, but each of these cases are readily distinguishable.
`
`The Yankee Publishing, Inc. v. News American Publishing, Inc., 809 F. Supp. 267 (S.D.N.Y.
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`1992) and Hormel Foods Corp. v. Jim Henson Productions, Inc., 73 F.3d 497 (2d Cir. 1996)
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`cases Applicant cites are distinguishable in that neither involved the use of the plaintiff’s
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`trademark, or a similar mark, as the brand name of the goods the defendants were selling. In
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`Yankee Publishing, the defendant, publisher of New York magazine, imitated the trade dress of
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`the famous Farmer’s Almanac cover as part of the cover design of New York’s holiday gift issue.
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`- 4 -
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`

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`The court found that the defendant did not use the plaintiff’s cover design elements as source
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`identifiers, but merely to effect a parody. Yankee Publishing, 809 F. Supp. at 273 (“While there
`
`is no doubt that New York published on its cover a recognizable imitation or caricature of the
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`Almanac’s trade dress, I find this was done in a manner that made it sufficiently clear to
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`consumers that it was a joke and not a trademark source identifier.”) Moreover, the court noted
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`that the source of origin of the defendant’s magazine was clear because the NEW YORK mark
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`was “presented in its very familiar logo and type style in large bold letters across the top quarter
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`of the page.” Id.
`
`In Hormel Foods, the defendant named a wild boar character in its Muppet Treasure
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`Island movie “Spa’am” as a humorous reference to the plaintiff’s SPAM product. The plaintiff
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`challenged the use of the character’s likeness with and without the name “Spa’am” on movie-
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`related merchandise. The court denied the plaintiff’s dilution by blurring claim, in part, because
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`the defendant was not using “Spa’am” “as a product brand name.” Rather, “Spa’am is a
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`character in products branded with Henson’s own trademark ‘Muppet Treasure Island.’” Hormel
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`Foods, 73 F.3d at 506.2 Because Applicant is using his mark as a source identifier, his use is
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`distinguishable from the uses at issue in Yankee Publishing and Hormel Foods.
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`The Tommy Hilfiger Licensing Inc. v. Nature Labs LLC, 221 F. Supp. 2d 410 (S.D.N.Y.
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`2002) and Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007)
`
`cases Applicant cites are distinguishable in that there was no evidence that the alleged parodies
`
`at issue in those cases were intended to communicate information about the nature and quality of
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`the defendants’ own goods through association with the defendants’ goodwill. These uses stand
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`2
`Yankee Publishing and Hormel Foods are further distinguishable in that they addressed dilution claims only
`under New York’s anti-dilution statute and not the TDRA (which had not yet been adopted).
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`- 5 -
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`

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`in stark contrast to this case, where Applicant concedes that one of the principal reasons for his
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`adoption of the WOOFDORF-ASTORIA mark is to trade on consumer associations of the
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`WALDORF ASTORIA mark with “5-star luxury quality of service” and thereby communicate
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`that his own services are of like quality. (Marcus Dep. at 112:20-24.) Applicant’s mark is not a
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`parody. Rather, it is merely an attempt “to get attention or to avoid the drudgery in working up
`
`something fresh” and thereby free ride on Hilton’s WALDORF ASTORIA mark. See Campbell,
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`510 U.S. at 580; see also Anthony L. Fletcher, “The Product with the Parody Trademark:
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`What’s Wrong with CHEWY VUITTON,” 100 Trademark Rep., no. 5 (Sept.-Oct. 2010) at 1141
`
`(attached hereto as Exhibit A) (citing this language from Campbell as “the copyright analog of
`
`the ‘free ride’ in trademark law; the use of a known mark for the attention value it commands
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`and, often, the favorable reaction it engenders.”). It is exactly this kind of association that
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`constitutes dilution by tarnishment and that the TDRA was designed to halt.3 See Starbucks
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`Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009) (rejecting parody defense and
`
`finding that defendant’s CHARBUCKS mark dilutes plaintiff’s STARBUCKS mark); Saks &
`
`Co. v. Hill, 843 F. Supp. 620 (S.D. Cal. 1993) (rejecting parody defense and finding that
`
`defendant’s SACK’S THRIFT AVENUE diluted plaintiff’s SAKS FIFTH AVENUE mark);
`
`Hard Rock Cafe Licensing Corp. v. Pacific Graphics, Inc., 776 F. Supp. 1454, 1462 (W.D.
`
`Wash. 1991) (rejecting defendants defense that HARD RAIN CAFE was a parody of HARD
`
`ROCK CAFE and holding that “[a] defendant’s claim of parody will be disregarded where the
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`purpose of the similarity is to capitalize on a famous mark’s popularity for the defendant’s own
`
`3
`The risk of harmful association is particularly acute in this case because, as set forth in Hilton’s response to
`Applicant’s cross motion for summary judgment, Hilton offers a wide variety of pet products and services under its
`WALDORF ASTORIA mark.
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`

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`commercial use…. [T]his case is different from those cases in which courts have found … true
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`parody.”).4
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`For the foregoing reasons and reasons those set forth more fully in Hilton’s opening brief,
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`Hilton submits that Applicant’s WOOFDORF-ASTORIA mark is likely to dilute the distinctive
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`quality of Hilton’s WALDORF ASTORIA mark as a matter of undisputed fact and law.
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`Accordingly, Hilton respectfully requests that the Board grant this Motion.
`
`Dated: September 29, 2011.
`
`/s/ David J. Stewart
`David J. Stewart
`Georgia Bar No. 681149
`Laura Kees
`Georgia Bar No. 217754
`Jessica Lewis
`Georgia Bar No. 142490
`ALSTON & BIRD LLP
`1201 West Peachtree Street
`Atlanta, GA 30309-3424
`Telephone: (404) 881-7000
`Facsimile: (404) 881-7777
`
`Counsel for Opposer HLT Domestic IP LLC
`
`4
`The Tommy Hilfiger case is also distinguishable on the grounds that the court’s decision was influenced by
`the fact that the defendant’s product, pet perfume, is “inherently a parody item….” Tommy Hilfiger, 221 F. Supp. 2d
`at 421 (distinguishing cases that found DOGIVA dog biscuits to infringe the GODIVA mark and FIDO-LAY dog
`treats to infringe the FRITO-LAY mark).
`
`- 7 -
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`

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`CERTIFICATE OF SERVICE
`
`This is to certify that I have this day served a copy of the foregoing Opposer’s Reply
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`Brief in Support of its Motion for Summary Judgment via First Class Mail on the following
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`counsel of record:
`
`Gary A. Essman
`Andrus, Sceales, Starke & Sawall LLP
`100 E. Wisconsin Avenue, Suite 1100
`Milwaukee, Wisconsin 53202
`
`Dated: September 29, 2011.
`
`/s/ Jessica E. Lewis__________________________
`Jessica E. Lewis
`
`- 8 -
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`

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`EXHIBIT A
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`

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`Page 1
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`
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`Le><isNexis‘i
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`l of] DOCUMENT
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`Copyright © 2010, The international Trademark Association,
`The Trademark Reporter
`
`September, 2010 - October, 2010
`
`100 TMR 1091
`
`LENGTH: 25256 words
`
`ARTICLE: THIE PRODUCT WITH THE PARODY TRADEMARK: WHAT'S WRONG WITH CHBWY VUITON?
`
`Anthony L. Fletcher *
`
`* Senior principal, Fish & Richardson P.C., New York, NY; associate member of the Internationai
`Trademark Association; member of the Saul Letkowitz Moot Court Competition Committee; The Trademark
`Reporter Editorial Advisory Board; recipient of the International Trademark Association President's Award,
`2003.
`
`TEXT:
`
`[*l09l] I. IN'I‘ROl)UC'l‘ION: A TALE OF TWO CASES
`
`In the halcyon year of 1960, nl Anheuser~l3ush‘s BUDWEISER beer was riding the crest of five years of marketing
`under the slogan "Where there's life .
`.
`. there's Bud," and more than a quarter of a century of "Where there's iife .
`.
`.
`there's Budweiser." More than forty million doilars' advertising supported the result of surveys showing that "a
`substantial portion of the public was not on!y acquainted and familiar with the slogans but also associated the slogans
`with Budweiser beer." n2 Chemical Corporation of America (CCA) made and sold "a floor wax which contains an
`insecticide" n3 under the brand name FRBEWAX, and advertised it using the catchy siogan "Life on Floors .
`.
`. Death
`on Bugs." When CCA decided to switch to the even catchier slogan "Where there‘s life .
`.
`. there's bugs," it knew of
`Anheuser's "Where there's life .
`.
`. there's Bud." This was a strategically sound admission, because nobody was likely to
`believe the similarity was coincidence. Shortly after commencing suit, Anheuser obtained a supplemental registration of
`"Where's there's life .
`.
`. there's Bud." n4
`
`n1 Singer Elvis Presiey returned from two years‘ Army duty in Germany, the Canton of Geneva in
`Switzerland gave women the right to vote, Ben Hair won the Academy Award for best motion picture, a Soviet
`missile shot down a US. U-2 spy plane over Russia, To Kill‘ A M()ckir7gbir‘d was first published, a young
`American boxer named Cassius Clay won the Oiyrnpic Gold Medal and subsequently began his professional
`career, Dr. Martin Luther King was (briefly) jailed in Atlanta, Georgia, for a traffic infraction, Lady Chatterley's
`Lover was found not obscene by a court (the Old Bailey in London), John F. Kennedy was elected President
`
`

`
`100TMR109l,*1091
`
`Page‘;
`
`over close runner-up Vice-President Richard M. Nixon, and the last car was manufactured bearing the DeSOTO
`automobile brand, inter alia.
`
`n2 C/rem. Corp. of/lm. v. AI?l'1(?t4S€f‘~Bti'.S'c'.l'7, Ind, 306 F.2d 433, 434 (5th Cir. 1962).
`
`n3 Id. (21435.
`
`n4 So says the opinion at 434. The author's attempt to verify the fact on the PTO TESS database discloses
`only a Principal Register registration of the phrase.
`
`{* 1 092} The court endorsed the lower court's enjoining CCA‘s use of its new slogan. In so doing, it said:
`"defendant's use of the slogan was confusingly similar to plaintiff's. .
`.
`. ['l"}he rhythm, meter and pictures which
`appeared at the time that the slogan was used, when taken as a whole, created the impression that defendant's
`advertising had some connection with the plaintiffor plaintiff's product." n5 That may be a modest stretch, but it seems
`plain that the CCA advertising appeared to have some ancestral connection to the BUD advertising, which certainly lent
`support to the court's "impression [of] some connection."
`
`n5 Id. at 435.
`
`The court's opinion is a well-written synthesis of vitriol and scant authority.
`
`. The gist of this action is that the plaintiff has a property interest in the slogan, built up at great
`.
`.
`expense, and that it and its products are favorably known as a result of its use of this property right and
`that the defendant, with full knowledge of the right and with the purpose of appropriating some of the
`value engendered in the minds of the public by its use has used, and proposes further to make use of, a
`deceptively similar slogan in a manner that will bring direct financial loss to the plaintiff, both by reason
`of confusing the source of the defendant's product, and by reason of the peculiarly unwholesome
`association of ideas when the word "bugs" was substituted for the word "Bud,“ referring to a food
`product. n6
`
`n6 Id. at 437. Similarly, see: "We are aware of the fact that the Court should not be swayed by its instinctive
`reaction upon reading the record that this is a brazen and cheap effort by the defendant below to capitalize on the
`good will created by the tremendous expenditure in advertising by the plaintiff. This, of course, is not enough to
`warrant the grant of relief, but any conduct that is of such nature as to fairly reek with unfairness and a callous
`indifference to the damage that might occur to others from the action taken by it will naturally be examined most
`carefully by .
`.
`. an appellate court whose duty it is to determine whether such conduct falls afoul of any
`established legal principles. .
`.
`. [W]e are not reluctant to conclude that what is here morally reprehensible is also
`legally impermissible." Id. (11438.
`
`In affirming the trial court's injunction based on Florida unfair competition law (federal jurisdiction rested on
`diversity of citizenship}, the court ruled that under Florida case law n7 "[a] cause of action may exist where simulation
`of another's name or slogan causes damage on grounds entirely separate from actual confusion between competitors as
`to source of the product." It also relied on [* 1093] Ill Restatement of the Law of Torts, §§ 730-31: "One's interest in a
`tradennark or trade name came to be protected against simulation, .
`.
`. not only on competing goods, but on goods so
`related in the market to those on which the trade—marl< or trade name is used that the good or ill repute of the one type of
`goods is likely to be visited upon the other." n8 The general consensus of the trademark bar by the mid—seventies
`seemed to be that the case was perhaps a bit thin on legal authority but sound in reasoning and, certainly, in result. n9
`
`n7 Sim Coast, Inc. v. S/ni;)e, 52 So. 251805 (Fla. Sup. Ct., 1951); Sen:/co v. McCul!o}i, 68 So. 2a’577 (Fla.
`
`

`
`100 TMR 1091, *l093
`
`Pagc3
`
`Sup. Ct. 1953).
`
`n8 Cfrem. Corp. qf/lm., 306 F.2d at 435'. Citing Restatement (Third) of Torts
`
`730-3] (1998).
`
`n9 Author's recollection.
`
`1'*‘or'ty-five years later, LOUIS VUITTON was by one measure ranked the seventeenth most prestigious trademark
`in the world, and much of the company's luggage, handbags, and accessories are adorned by distinctive trade dress
`{some of it copyrighted}. A merchant of canine play toys marketed doggy chew toys that were crude plush replicas of
`the their most—in—demand line oi’VUiTTON bags and accessories. The dog toy bore the brand name CHEWY VUITON.
`Dogs seemed to like them; the LOUIS VUITTON brand owners didn’t. Perhaps it was the image of a cheap plush
`replica encrusted with dried dog drool that offended their proprietary sensibilities. That image seems to be a reasonable
`analog for the impression of "Where there's life .
`.
`. there's bugs." The dog toys survived, after cross motions for
`summary judgment and an appeal, however. n10
`
`n10 Louis‘ Vriirrorr Mai’I'eIierS.A. v. I-lame Diggity Dog, LLC, 507 F.3d 252 (4111 Cir. 2007).
`
`Haute Diggity Dog was in the business of selling products at least some ofwhich mocked prestigious trademarks
`for others‘ products. Others of its "brands" were CHEWNEL NO. 5, FURCEDES, JIMMY CHEW, DOG
`PERIGNONN, SNIFFANY & C0,, and DOGIOR, nl i and it aggressively contended that no "reasonahie factfinder
`[could] conclude that there is likelihood of confusion, because it successfully markets its products as parodies of famous
`marks. .
`.
`." I112 Haute Diggity Dog asserted that it is "precisely because of the [‘'famous'' imitated] mark‘s fame and
`[*l094] popularity .
`.
`. confusion is avoided, and it is on this lack of confusion that a parodist depends upon to achieve
`the parody." 1113
`
`till These evidently were intended to correlate, respectiveiy, with CHANEL NO. 5 fragrance, MERCEDES
`automobiles, JIMMY CHOO shoes, DOM PBRIGNON champagne, TIFFANY & CO. jewelers, and DIOR
`fashions and accessories.
`
`1112 Lewis Vuitrorr, 507 F.3d at 259.
`
`til 3 Id. Iiaute Diggity Dog continues: "It is necessary for the pet products to conjure up the original
`designer mark for there to be a parody at all. However‘, a parody also relies on ‘equally obvious dissimilarit[ies]
`between the marks" to produce its desired effect."
`
`The court pretty much accepted this analysis, although it did so in somewhat different terms. First, it introduced the
`concept of "successful parodies" and parodies that are not "successful." Whether there is likelihood of confusion under
`the traditional multi-factor analysis depends[] to a great extent on whether Hautc Diggity Dog's products and marks are
`successful parodies" of the LOUIS VUITTON marks and trade dress. n14 The concept of "success" with respect to
`parodies was not explained outside the context of whether or not a parody is successful determining whether there is
`likelihood of confusion under the Fourth Circuit test.
`
`nl4 Id. at 260.
`
`Second, the court defined par'oa'y, for trademark purposes, as a simple form of entertainment conveyed by
`juxtaposing the irreverent representation of the trademark with the idealized image created by the mark‘s owner," n1 5
`and amplified that "A parody must convey two siinultaneous——and contradictory--messages: that it is the original, but
`also that it is not the original and is instead a parody." n16 (The notion that parody must convey two contradictory
`messages .s‘i'muIrar1eotr.s'!y is a frequent Shibboleth in the legal iiterature on the subject. "Simultaneous" means "existing
`or occurring at the same time: exactly coincident." n17 Common experience teaches that it is, at the very least, rare to
`
`

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`100 TMR 1091, *1094
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`believe two diametrically opposed things at exactly the same time; more often, if not always, the messages are
`sequential, perhaps very quickiy, perhaps not so quickly; either recognition can come first for the parody to work; and
`the parody can work if the target never believes it to be the 0t'iginal-~(s)l1e need only recognize the reference.) Third, the
`court explained that:
`
`This second [simultaneous] message ["that it is not the original"] must not only differentiate the
`alleged parody from the original but must also comnnmicate some articulable element of satire, ridicule,
`joking or amusement. Thus, "[a] parody relies upon a difference from the original mark,
`[*1095]
`presumably a humorous difference, in order to produce its desired effect.“ 1118
`
`1115 Id., citing Peop1'ef0r' the E!/rfcal Tieafmeril rJj'Ai7I‘mai’s v. Doug/may, 263 F.3d 359, 366 (4117 Cir. 2001).
`
`n16 1d., citing the same case.
`
`1117 Merriam—Webster online, http://www.merriam-webster.com/dictionary/simultaneous.
`
`n18 Lomlr Vuitiorr, 507 F.3d at 260, quoting Jordache Emerp:'.".s'es, Inc. ‘J. Hogg Vlérlal, L(d., 828 F.2d 1482,
`1487 (10.47 Cir. 1987), discussed irg}’i'c1.
`
`The court then turned to the following analysis of the case before it: (1) "the pet chew toy is obviously an
`irreverent, and indeed intentional, representation of the LVM handbag. .
`. ." (2) “No one can doubt that LVM handbags
`are the target of the imitation by HDD's ‘Chewy Vuiton‘ dog toys." (3) "At the same time, no one can doubt also that the
`‘Chewy Vuiton‘ dog toy is not the ‘idealized image‘ of the mark created by LVM. .
`.
`." (4) "Finally, the juxtaposition of
`the similar and dissimilar—-the irreverent representation and the idealized image of an LVM handbag——immediately
`conveys a joking and amusing parody. '1’he furry little ‘Chewy Vuiton‘ imitation, as something to be chewed by a dog,
`pokes fun at the elegance and expensiveness of a LOUIS VUITTON handbag, which must nor be chewed by a dog." (5)
`"The dog toy irreverently presents haute couture as an object for casual canine destruction. The satire is unmistakable.
`The dog toy is a comment on the rich and famous, on the LOUIS VUITTON name and related marks, and on
`conspicuous consumption in general." n19
`
`n19 Id. at 260-61.
`
`Having concluded that no one could doubt that the "Chewy Vuiton" image was not the idealized image of LOUIS
`VUITTON, the court then ran through its Circuit's likelihood of confusion factors, finding confusion not likely. n20 it
`then turned to dilution under the Trademark Dilution Revision Act of 2006. 1121 The Court's consideration of dilution by
`blurring is interwoven throughout a discussion of the six statutory factors for determining if there is dilution by blurring.
`n22
`
`n20 Id. at 261-263.
`
`1121 15 U.S.C. §1125(c).
`
`n22 L0m'.s' Vzrfttorr, 507 F.3d at 266-68,- the factors are: (i) degree of similarity, (ii) degree of inherent or
`acquired distinctiveness of the famous mark; (iii) extent of mark owner's exclusivity of the mark; (iv) degree of
`recognition of the famous mark; (v) whether there is an intent to create an association with the famous mark; and
`(vi) actual association between the famous mark and the parody mark or trade name. See 15 US. C. §
`1125(c)(2)(B).
`
`The gist of its reasoning that there was no blurring by dilution was:
`
`

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`100 TMR i091, *l095
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`Page 5
`
`Under the statute's plain language, parodying a famous mark is protected by the fair use defense only
`if the parody is not "a designation of source for the person's own goods or services."
`
`{$1096} =i<
`
`xi:
`
`=9:
`
`. While a parody intentionally creates an association with the famous mark in order to be a parody, it
`.
`.
`aiso intentionally communicates, if it is successful, that it is not the famous mark, but rather a satire of
`the famous mark. .
`.
`.
`
`3l<*Pi<
`
`. IfHaute Diggity Dog used the actual marks of LVM (as a parody or otherwise), it could dilute
`.
`.
`L\/M's marks by blurring, regardless of whether Haute Diggity Dog's use was confusingly similar,
`whether it was in competition with LVM, or whether LVM sustained aclditionai injury. .
`.
`.
`
`But in this case, Haute Diggity Dog mimicked the famous rnarks; it did not come so close to them as
`to destroy the success of the parody and, more importantly, to diminish the LVM marks‘ capacity to
`identify a single source. I-laute Diggity Dog designed a pet chew toy to imitate and suggest, but not use,
`the marks ofa high-fashion LOUIS VUITTON handbag. It used "Chewy Vuiton“ to mimic "LOUES
`VUlTTON"; it used "CV" to mimic "LV"; and it adopted imperfectly the items of LVlVl‘s designs. We
`conclude that these uses by l-Iaute Diggity Dog were not so similar as to be likely to impair the
`distinctiveness of LVM's famous marks. n23
`
`n23 507 F.3d ar266-68.
`
`Dilution by tarnishment was dismissed on the ground that all that had been argued was that a dog might choke on
`the toy and die, and there was no evidence one ever had. n24 Back when CCA lost to Bud, the court recognized "the
`particuiarly unwholesome association of ideas when the word ‘bugs’ was substituted for the word ‘Bud,’ referring to a
`food product." 1125 A vvatered—down analog of that argument might have better served the tarnishinent claim than the
`one made, although a reader of the opinion must doubt whether any argument could have swayed that court at this point
`in time.
`
`n24 Id. at 269.
`
`n25 Chem. Corp. ofAm. v. Arrl2eu.ser'-Busch, Inc, 306 F.2d 433, 43 7-38 (5th Cir. 1962).
`
`What is interesting about the two decisions is that several of the factors one court condemned in 1962 were, more
`than arguably, present in the 2007 decision. There can be no doubt, for example, that Vuitton "has a property interest in
`{its name and mark], built up at great expense, and that its products are favorably known as a result of its use ofthis
`property right, and [* 1 097] that the defendant, with full knowledge of the right and with the purpose of appropriating
`some of the value engendered in the minds of the public by [Vuitton‘s] use," sold the CHEWY VUITON chew toys. n26
`Not unfairly, Haute Diggity Dog's conduct also may be characterized as "a brazen and cheap effort .
`.
`. to capitalize on
`the good will created by the tremendous expenditure in advertising by the plaintiff‘; it is perhaps a mild overstateinent to
`say that H'aute Diggity Dog's conduct was "of such nature as to fairly reek with unfairness," but "a callous indifference
`to the damage that might occur to others from the action" is no more than one inflammatory adjective off the mark;
`"morally reprehensible" might be pushing it in this era. n27
`
`n26 See 306 F.2d at 437.
`
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`100 TMR 1091, "‘l097
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`n27 All quotations from Chern. Corp. of/lm., 306 F.2d al 43 7~38.
`
`Of course, a modernist could point out, correctly, that the CCA case evidenced no recognition of the possibility of
`parody, or a joke, or even free speech. The decisions reflect different sensibilities and different times. The intent of this
`article is to explore how the law got from there to here, to identify and point out some possible missteps, and forgotten
`right steps, along the way, and, ultimately, to propose a paradigm for analysis of parody trademarks.
`
`II. DURING THE INTERVAL BETWEEN THE DECISIONS
`
`A. To the End‘ afthe Seventies: Setting the Scene
`
`1. Copyright Cases in the Sixties and Seventies
`
`. there's bugs," and immediately thereafter, parody and similar phenomena were
`.
`Prior to the "Where there's life .
`first dealt with in copyright cases, and the critical question was whether there was "fair use" or not. The history of "fair
`use" has been stated succinctly:
`
`In determining whether given conduct constitutes copyright infringement, the courts have long
`recognized that certain acts of copying are defensible as "fair use." It has been said that the affirmative
`defense of fair use "permits courts to avoid rigid application of the copyright statute when, on occasion,
`it would stifle the very creativity which that law is designed to foster." The Copyright Act of 1976 for the
`first time accorded express statutory recognit