Parody and Trademark Infringement. It's No Laughing Matter.

One topic that is coming up more and more of late is whether you can adopt and use a mark which parodies an established famous mark? We have seen it recently in the case of Jimmy Winkelmann, a Missouri teenager who grew up infatuation with The North Face products and decided to come up with his own competing apparel line to mock the ubiquitous North Face fleece calling his line The South Butt. The North Face is not amused and has filed suit to stop Jimmy’s use of the parody mark.

Haute Diggity Dog, LLC tried to parody several famous marks in making their line of doggy products such as Chewnel No. 5, Jimmy Chew, Dog Perignonn, Sniffany & Co., and Dogior. Again, the more famous mark owners were not amused. They sued poor Haute Diggity Dog.

Others are out there as well, every day, coming up with new humorous twists on existing brands. Why they choose to do so – who knows? Can they do it, probably. Should they? Well, that’s a function of how much you want to spend in legal defense fees.

The law of trademarks has evolved to allow the parody of famous marks in some instances. Technically speaking, a parody is defined 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. It must convey two simultaneous – and contradictory – messages: that it is the original, but also that it is not the original and is instead a parody.

The second message must not only differentiate the alleged parody from the original but must also communicate some articulable element of satire, ridicule, joking, or amusement. Thus a parody relies upon a difference from the original mark, presumably a humorous difference, in order to produce its desired effect.

But mark adopters beware, Parody is not automatically a complete defense to a claim of infringement, likelihood of confusion, or dilution. And just because you may be able to do something does not mean that you should.

Owners of the more famous brands are increasingly going after these irreverent versions of their marks on a belief that the Parody marks are still stealing their hard-earned and valuable good will.

Whether or not they should lighten up and allow the Parodies is up to them. But for all considering adopting a Parody of a famous mark beware – legal defense fees, win or lose, are no laughing matter.

The Trademark Company