Written By Guest Author, Marks Gray Summer Law Clerk Corrine H. Bowden
What do Louis Vuitton luxury handbags have in common with “Chewy Vuiton” dog toys?
According to the Fourth Circuit, not enough.
The court’s November 2007 ruling in favor of the underdog in Louis Vuitton Malletier S.A., v. Haute Diggity Dog, LLC made what has proven to be a lasting impact on trademark law. The opinion also outlines a thorough dilution analysis revolving around a memorable set of facts.
Background of the Case
Haute Diggity Dog manufactured and sold a line of pet chew toys whose names parodied high-end product brands, including perfume, shoes, jewelry, and cars. For example, it offered plush and pet friendly “Chewnel No. 5” perfume, “Jimmy Chew” shoes, and “Sniffany & Co.” jewelry.
The “Chewy Vuiton” line of toys generally sold for less than twenty dollars. They resembled miniature handbags, and they were reminiscent of the shape, design, and color of Louis Vuitton Malletier (LVM) handbags. They even mimicked the “LV” mark with a “CV.”
The world-renowned luxury goods manufacturer sued Haute Diggity Dog. They alleged trademark infringement, trademark dilution, and copyright infringement, among other claims. The United States District Court for the Eastern District of Virginia granted summary judgment in favor of Haute Diggity Dog, and LVM appealed.
Dilution Analysis
LVM argued that Haute Diggity Dog’s advertising, sale, and distribution of “Chewy Vuiton” toys diluted its famous and distinctive marks. This is in violation of the Trademark Dilution Revision Act of 2006.
To state a prima facie (“first impression”) dilution claim under the FTDA, a plaintiff must show:
- that it owns a famous, distinctive mark
- that the defendant commenced using a mark in commerce that allegedly dilutes the famous mark
- that a similarity between the defendant’s mark and the famous mark give rise to an association and confusion between the marks; and
- that the association is likely to impair the distinctiveness of the famous mark or likely to harm the reputation of the famous mark.
The fourth prong identifies two categories of dilution: blurring and tarnishment.
Blurring
“Blurring” occurs when a famous mark’s distinctiveness is harmed because it becomes, or is likely to become, associated with a similar mark or trade name.
In other words, the third party’s mark impairs consumer perception that the famous mark is connected to the plaintiff’s goods or services.
Courts must consider six factors to determine if blurring has occurred, including:
- The degree of similarity
- How recognizable the famous mark is
- Whether the defendant intended to create an association with a famous mark
- The actual association between the marks
LVM argued that, before the district court’s decision, the famous marks were not blurred by any third-party use. Furthermore, they asserted that allowing Haute Diggity Dog to become the first to use similar marks would blur and dilute the Louis Vuitton marks.
The court’s primary analysis focused on whether a parody creates a likelihood of confusion for consumers, thus rising to the level of trademark infringement. Recognizing that the name “Chewy Vuiton” was an obvious and successful parody, the Fourth Circuit affirmed the district court’s decision. They held that Haute Diggity Dog’s use of the term was not likely to cause confusion.
As a result, the court held that while the use of a parody mark does not support a “fair use” defense, it may be considered in determining whether the owner of the mark has proven the defendant’s use is likely to impair the distinctiveness of the famous mark. The court reasoned that a parody overwhelmingly similar to a famous mark could be construed as actual use of the famous mark.
However, in this case, because Haute Diggity Dog’s use merely mimicked the famous marks, it did not run the risk of destroying the mark. Moreover, Haute Diggity Dog’s use did not diminish the famous mark’s capacity to identify LVM as a single source.
Tarnishment
“Tarnishment,” on the other hand, is harm done to the reputation of a famous mark.
LVM argued that the dog toys harm the reputation of its marks, because a dog could choke on a “Chewy Vuiton.” Unfortunately for LVM, the court quickly dismissed the claim on the basis that LVM’s assertion was supported only by speculation.
The Fourth Circuit’s Ruling and Impact on Trademark Law
Apparently, LVM went barking up the wrong tree.
The Fourth Circuit affirmed the decision of the district court. Since then, the case has successfully prevented other renowned brands from obtaining injunctions against companies who rely on parody to turn a profit.
For instance, in Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., Starbucks pursued an injunction against Wolfe’s Borough Coffee. They had formerly conducted business as Black Bear Micro Roastery and used names like “Mister Charbucks,” “Mr. Charbucks,” and “Charbucks Blend” as names for their roasted coffee beans.
Admittedly, one of the reasons the New Hampshire roaster used the term “Charbucks” was to poke fun at Starbucks’s reputation for over-roasting its beans.
On appeal, the Second Circuit turned to the Haute Diggity Dog court’s dilution analysis and the six blurring factors. Accordingly, the Second Circuit recognized that not every factor will be relevant to a given case. Not every claim for blurring will require extensive discussion of the factors.
The court went on to flexibly weigh the factors. They ultimately concluded that, because its principal evidence of consumer association was flawed, and because there was minimal similarity between the marks, Starbucks failed to show that Black Bear’s use of the “Charbucks” marks were likely to dilute the Starbucks marks. The Second Circuit thus affirmed the district court’s ruling.
Tips for Business Owners Launching a New Mark
If you are considering adopting a new mark for your business, follow these guidelines to start.
- Before you begin using a trademark, do your research to ensure that no one else is using it.
- Run a search to determine whether the new mark is likely to cause confusion with the same or similar goods or services—or harm the reputation of an existing brand with a famous mark.
Marks Gray can help you run the proper searches and avoid what could be a costly dispute.