The Board’s not horsing around.

The TTAB recently released a non-precedential opinion cancelling registration of this mark,

and rejecting registrant’s parody defense. Where will this opinion fall in the lineup of parody cases?

The opinion arose out of Polo Ralph Lauren Corporation’s cancellation proceeding against Thread Pit, Inc.’s registration of the above-referenced mark in connection with t-shirts and collared polo shirts. Thread Pit sells $5 t-shirts on line. Based on the facts supporting fame in the opinion, I think you know what Ralph Lauren sells. Ralph Lauren alleged likelihood of confusion and dilution and that its mark:

is famous.

The Board’s opinion gave short shrift to Respondent’s argument, “[i]f Petitioner’s Polo Player mark is so famous and recognized, it is unlikely that consumers would believe goods bearing Registrant’s mark came from the same source.” The Board referred to this argument as academic hogwash and failed to even footnote Chewy Vuiton, a 4th Circuit case; in fact, the Board went out of its way to mention its reviewing court, which as we all know, is not the 4th Circuit. The Board stated: “Respondent’s argument . . . is counter to legal precedent of the Board and the Board’s primary reviewing court, the Court of Appeals for the Federal Circuit. As stated by the Federal Circuit: While scholars might debate as a factual proposition whether fame heightens or dulls the public’s awareness of variances in marks, the legal proposition is beyond debate. The driving designs and origins of the Lanham Act demand the standard consistently applied by this court – namely, more protection against confusion for famous marks.”

After an analysis of the parties’ goods (identical), channels of trade (same), classes of purchasers (same), and similarity of marks (similar in commercial impression), the Board returned to the parody defense. Ralph Lauren’s pony definitely came out ahead.

“Parody is not a defense if the marks are otherwise confusingly similar” the Board wrote, quoting Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d, 1581, 1592 (TTAB 2008). This argument seems reasonable and even supported by statute: parody is a defense as long as your parodying mark is not a source indicator says the Lanham Act. In that way, the Lanham Act allows traditional trademark principals such as likelihood of confusion, prior use, and restraints on trade to trump first amendment concerns. But the Board didn’t go that far in explaining its reasoning. Instead, the Board relied more fully on a different basis. Basically, the Board did not believe Respondent was parodying Ralph Lauren’s pony but was instead parodying “a lifestyle.” Indeed, Respondent argued it was parodying the “social elite as embodied by the sport of polo, which is perceived to be a sport reserved for the elite. The rider falling off the horse is the parody of that elite, luxury lifestyle. And of the humor in seeing someone fall off a horse, somewhat like slapstick comedy.” Where Respondent lost its way was in its failure to connect the POLO brand, a symbol of that “elite lifestyle,” to the rest of its argument. Isn’t the Ralph Lauren polo player emblazoned on an $85 polo shirt a symbol of the “elite lifestyle” Respondent is parodying? And wasn’t that the target of Respondent’s parody? Failing to take the argument one step further left the field open for the Board to say, “parodying a lifestyle is not a parody of a trademark” and rely on Elvis Presley, a case with a substantially dissimilar parody versus trademark set of facts.

Even if Respondent had connected those dots, would the Board have been able to rely on the recent TTAB decision in Crackberry to reject the parody argument? In Crackberry, full opinion here, the parody defense didn’t work because the applicant’s services, “online retail store services featuring consumer electronics and telecommunications products,” were found to be “closely related” to the opposer’s handheld devices. As such, the opposer’s goods were not a “juxtaposition of the similar and dissimilar.” In other words, you can’t parody a product when you provide support services for it—that would be akin to making fun of the popular kids while simultaneously ironing their cheerleading uniforms. The Crackberry Board, the Board cited Chewy Vuiton where a $10 dog chew toy was found to be a legitimate parody of Louis Vuitton’s $1190 handbags.

Would Respondent’s $5 t-shirt have been a sufficient “juxtaposition of the similar and dissimilar” when compared to Ralph Lauren’s $85 polo shirt?

Practice pointer: Parody is tough to argue successfully. You better make the judges laugh, and you better have an actual paradoxical product or service, otherwise, you’re just infringing. Cobalt thinks a good tag line making your point clear wouldn’t hurt either:

Watch the 1% Fall

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