Kaytie Hobbs, Associate Member, University of Cincinnati Law Review
Luxury fashion shoe icon Balenciaga is no stranger to the spotlight. People sing praise for Balenciagas – the ones that look like socks – with Cardi B., or keep tabs on the ugly-shoe trend while drooling over magazine pictures of the company’s coveted Triple-S sneakers.[1] It is no surprise, then, that Pawmain Pets, a pet clothing company parodying streetwear, chose to imitate Balenciaga.
Pawmain Pets (“Pawmain”) sells pet tees and hoodies with the name “Pawlenciaga.”[2] Pawmain, owned by Printing by Demand, LLC, filed an application with the U.S. Patent and Trademark Office (“PTO”) to register Pawlenciaga as a trademark. On September 24, 2018, Balenciaga filed a Notice of Opposition to the application, claiming that Pawlenciaga products will cause confusion, mistakenness, deceive consumers, or will dilute Balenciaga’s trademark by blurring and/or tarnishment.[3]
The primary motivation behind the registration of trademarks is to protect consumers by ensuring that the information conveyed by a brand is truthful.[4] Accordingly, the Trademark Act requires rejection of applications that undermine this goal by using a mark so similar to a previously registered trademark that it causes confusion, mistake, or deception to the average consumer.[5] A mark is defined in the Trademark Act as essentially any mark used to identify a good or service.[6]
In essence, Balenciaga is arguing that the use of Pawlenciaga on Pawmain’s pet clothing will trick customers into believing that the products are derived from the Balenciaga brand. Pawmain is likely to respond that the marks are similar on purpose: to signal the parody in their products.
The Trademark Manual of Examining Procedure, which spells out guidelines the PTO uses when evaluating registrations, notes that a registrant advancing a parody defense does not, by itself, defeat a likelihood of confusion.[7] This is because parodies can still be confusing if not done well; a true parody should, in fact, succeed in creating a distinction between the original product and the parody.[8] If the parody does create confusion, the PTO will deny an applicant’s registration.
Pawlenciaga may not need to rely on trademark registration, however, as they can assert a strong defense predicated on precedent set forth in Louis Vuitton v. Haute Diggity Dog, a 2007 case concerning parody pet items (because parodies never go out of style).[9]
In Louis Vuitton v. Haute Diggity Dog, Louis Vuitton sued Haute Diggity Dog for trademark infringement.[10] Louis Vuitton, known for luxury handbags, inspired Haute Diggity Dog’s pet chew toys that were designed to look like purses and branded “Chewy Vuiton.”[11] The similarity, Louis Vuitton argued, would confuse consumers and therefore constituted infringement.[12]
To evaluate the likelihood of confusion, the Fourth Circuit listed seven non-exclusive factors to consider: strength of plaintiff’s mark; similarity of the two marks; similarity of the goods or services the marks identify; the similarity of the facilities the two parties use in their businesses; similarity of advertising used by each party; the defendant’s intent; and actual confusion. [13] These factors are not weighed evenly, and some factors may be irrelevant in certain cases.[14] Each factor is influenced by the finding of a parody, so the Fourth Circuit first had to determine whether Haute Diggity Dog had a successful parody. With that finding, the Court moved onto the second stage of analysis and weighed those factors.[15]
In reviewing the various differences between the products, the Court found that it was a successful parody, with the toy commenting on the wealthy brand and transforming it into an object to be slobbered on and ripped apart by dogs.[16]
Because even parodies can be confusing, the second stage of the analysis centered on the consideration of the previously-listed factors.[17] The status of the dog toys as a parody guided the discussion; it was necessary for the parody to closely mimic Louis Vuitton in order to be successful.[18] The products are different – luxury handbags versus chew toys – and sold differently, with Haute Diggity Dog selling other parody items.[19] While the two marks were intentionally similar, Haute Diggity Dog distinguished its products enough to make the parody apparent so that a consumer would not mistake it for Louis Vuitton.[20]
Ultimately, the Court noted that it becomes apparent that “an effective parody will actually diminish the likelihood of confusion, while an ineffective parody does not” and found that Haute Diggity Dog’s products did not cause confusion.[21]
The facts in Haute Diggity Dog are comparable to the Balenciaga’s opposition to the Pawlenciaga products. Even if the PTO decides to reject Pawlenciaga’s trademark registration, it is very likely that a later trademark infringement suit brought by Balenciaga would result in a court finding for Pawlenciaga.
Like Haute Diggity Dog’s Chewy Vuiton, Pawmain’s Pawlenciaga pet tees are unmistakably a parody to the average consumer, similarly commenting on the wealthy brand and transforming it into an item even a dog would wear. One factor focuses on the strength of the plaintiff’s mark; it is not disputed that Balenciaga is a high-end retailer with a strong mark. However, the stronger the mark, the less likely a consumer is to confuse the brand with a parody.[22] The marks are similar enough to convey its satire, with Pawlenciaga substituted for Balenciaga. Because Pawmain is selling pet clothing, an average customer would realize that “Paw” refers to the targeted user – a pet – and is a parody. Further, Pawmain sells Pawlenciaga pet clothing alongside other parodies, including Pawvinchy (parodying Givenchy) and Alexander Woof (parodying Alexander Wang).[23]
In sum, there is unlikely to be a shortage of Instagram posts from people displaying their Balenciaga streetwear alongside their beloved, Pawlenciaga-clad corgis anytime soon. Pawlenciaga may not ultimately garner a registered trademark, but will most likely prevail on trademark infringements claim brought against the company due to a strong parody defense.
[1] Cardi B., I Like It (Atlantic Records 2018). See also Selene Olivia, Dad Sneakers: the 2018 Ugly” Sneakers Trend, Vogue (April 23, 2018), https://www.vogue.it/en/fashion/accessories/2018/04/23/dad-sneakers-the-2018-ugly-sneakers-trend/.
[2] Pawmain Pets, https://pawmainpets.com/collections/pawlenciaga (last visited Oct. 18, 2018).
[3] Not. of Opp’n. (Sep. 24, 2018). http://tsdr.uspto.gov/caseviewer/pdf?caseId=87801216&docIndex=1&searchprefix=sn#docIndex=2
See also 15 U.S.C. § 1063 (2018).
[4] J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 2.22, 5th ed. (2018).
[5] 15 U.S.C. § 1052(d) (2018).
[6] 15 U.S.C. § 1127 (2018)
[7] U.S. PTO, Trademark Manual of Examining Procedure (“TMEP”), § 1207.01(b)(x) (October, 2017).
[8] Id.
[9] Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007).
[10] Id. Louis Vuitton also alleged trade dress and copyright infringement.
[11] Id. at 257.
[12] Id. at 259.
[13] Id. at 260.
[14] Id.
[15] Id.
[16] Id. at 261.
[17] Id. at 260.
[18] Id.
[19] Id. at 261. Haute Diggity Dog also sold pet toys referencing other luxury brands, such as “Chewnel No. 5” (Chanel No. 5), Sniffany & Co. (Tiffany & Co.), and Dog Perignonn (Dom Perignon).
[20] Id.
[21] Id.
[22] Id.
[23] Pawmain Pets, Supra note 2.
Image taken from: https://www.amazon.com/Haute-Diggity-Dog-HDD-023-Pawlenciaga/dp/B00SJLU23M
