Monday, December 14, 2009

Two Trademark Parody Cases For Your Amusement

In the first case, the companies behind the JOHNNIE WALKER brand of scotch whisky are suing the purveyors of JOHNNIE BARKER BLACK LAB flavored dog water (pictured above on the right) for infringement and dilution of the JOHNNIE WALKER BLACK LABEL trade dress (pictured above on the left) (see registrations here, here, and here). See Diageo Brands B.V. et al v. Vineyards et al., Case No. 09-cv-02002 (D. Conn. Dec. 9, 2009) (complaint here).

Anybody else out there really believe that Johnnie Walker is expanding its famous whisky brand into the highly lucrative canine beverage market? [For those who can’t get enough of these whacky trademark disputes involving parody pet items, check out prior blog posts here, here, and here].

The second trademark parody case involves a lawsuit by the company which owns the clothing brand THE NORTH FACE against a Missouri man named Jimmy Winkelmann and his related company over use of THE SOUTH BUTT in connection with certain clothing items. See North Face Apparel Corp., The v. Williams Pharmacy, Inc., et al., Case No. 09-cv-02029 (E.D. Mo. Dec. 10, 2009) (complaint here).

"The North Face" Jacket
"The South Butt" Jacket

The North Face opposed The South Butt’s attempt to register its mark. See The North Face Apparel Corp. v. The South Butt, LLC, Opposition No. 91191521 (T.T.A.B.). In response to cease and desist correspondence from The North Face, counsel for The South Butt stated that The South Butt was interested in having The North Face acquire The South Butt and its inventory for $1,000,000. {ed.--Hmm, has kind of a cybersquatting feel to it, doesn’t it}. The South Butt has since filed another trademark application and continues to sell its clothes through its website.

In this case, the attempt to take advantage of the trademarks and goodwill developed by The North Face seems clear enough that The South Butt is not likely to be able to get around a likelihood of confusion finding. And yet, to the extent that The South Butt attempts to defend its mark as a parody, this use of The South Butt on clothes does not strike me as such a clear cut example of a trademark parody which in turn ultimately undercuts the company’s parody argument (i.e., the parody in this instance is not as obvious as say the use of a famous scotch whisky brand label in connection with the sale of flavored dog water).

[Update: Daniel Corbett, who posts on the Pittsburgh Trademark Lawyer blog (a blog name that I can certainly relate to), has his own take on the The South Butt lawsuit here.]


Dave Heal said...

Ryan, where did you read that the South Butt counsel had responded looking to be bought out for a million dollars?

Ryan Gile said...

Paragraph 35 of the Complaint states "Counsel for The South Butt Defendants responded to The North Face on September 10, 2009, refusing Plaintiff’s request that The South Butt Defendants stop their infringing conduct. Counsel further stated that his client was interested in “[The] North Face acquiring [The South Butt] company, inclusive of its inventory, operational infrastructure, and intellectual property rights” and that counsel was authorized to offer to sell The South Butt to The North Face “for the sum of $1,000,000.00.” A copy of The South Butt Defendants’ September 10, 2009 letter to Plaintiff’s counsel is annexed hereto as Exhibit F.”