Trademark Review | February 2016

The Federal Circuit Considers Constitutionality of Refusal to Register Scandalous and Immoral Marks

The Lanham Act prohibits registration of marks that are defamatory, scandalous or immoral. Last month, in In re Tam, 808 F.3d 1321 (Fed. Cir. 2015) (en banc), the Federal Circuit ruled that Section 2(a) of the Lanham Act, which prohibits registration of “disparaging” trademarks, is unconstitutional.

The Federal Circuit is currently considering an appeal over registration of the mark “FUCT”, which was rejected by the U.S. Patent and Trademark Office (“USPTO”) as being “scandalous or immoral.” In part, the Applicant argued that prohibition of the registration of scandalous marks under Section 2(a) of the Lanham Act is unconstitutional. Following the decision in In re Tam, attorneys for the USPTO argued that “although a court could draw a constitutionally significant distinction” between marks that are disparaging versus marks that are scandalous or immoral under Section 2(a) of the Lanham Act, the USPTO does not believe “there is any longer a reasonable basis in this Court’s law for treating them differently.” Attorneys for the USPTO, however, reserved the right to argue that the ban on registration of scandalous and immoral marks could survive a constitutional challenge.

In re Brunetti, Case No. 15-1109, (Fed. Cir. filed November 6, 2015).

Louis Vuitton Loses Infringement Case and Is Criticized for Not Having a Sense of Humor

My Other Bag, Inc. (“MOB”) sells a line of handbags decorated with “imagery meant to evoke designer handbags from Louis Vuitton, Chanel and others” as a playful parody of those designer bags. The MOB handbags are made of canvas and display the mark “MY OTHER BAG” on one side and a drawing of the iconic Louis Vuitton designer bag on the other side. MOB’s bags sell for $35 to $55. The bag at issue in this case is shown here:

Louis Vuitton sued MOB for trademark infringement, trademark dilution by blurring, and copyright infringement. The court ruled that MOB’s line of bags were protected as fair use on the basis that use of Louis Vuitton’s trademarks constituted “parody.”

Parody is a defense to both trademark dilution and trademark infringement claims. One of the relevant factors in assessing a dilution claim is whether the defendant’s use of the plaintiff’s mark creates any actual association between the defendant’s use and the plaintiff’s famous mark. Similarly, the key factor in a trademark infringement claim is whether there is any likelihood that purchasers are likely to be misled or confused as to the source of the goods. Because a successful parody clearly indicates to the consumer that the defendant is not connected in any way to the trademark owner, there is no association with the plaintiff’s goods and consumers are not likely to be misled or confused. The court found that that the defendant’s use of the mark is an obvious parody because the whole point of the MOB bags is to play on the well-known “my other car …” joke by playfully suggesting the consumer’s “other bag” is a Louis Vuitton bag. The court openly criticized Louis Vuitton by stating it is “perhaps unfamiliar with the ‘my other car’ trope. Or maybe it just cannot take a joke.” In any event, the court found the MOB bags are clearly a joke and meant to be taken in jest.

The court also ruled that MOB’s bags are protected as fair use of Louis Vuitton’s copyrights. “Parody, even when done for commercial gain, can be fair use.” Further, the court found that the use of Louis Vuitton’s patterns is reasonable in relation to the purpose of the use. MOB used enough of Louis Vuitton’s pattern, but not more than necessary to communicate the parody of Louis Vuitton’s bags.

Louis Vuitton Malletier SA v. My Other Bag Inc., Case No. 1:14-cv-03419 (S.D.N.Y., January 8, 2016).