A Dog of a Case
By: CARRIE L. ROSENBERRY
May 2007
Haute Diggity Dog, LLC, a marketer of stuffed dog toys and beds under names like Chewy Vuiton, Sniffany & Co., and Dog Perignon, recently won a motion for summary judgment for alleged trademark violations. Luxury goods manufacturer Louis Vuitton Malletier accused Haute Diggity of trademark infringement, dilution, counterfeiting and copyright violation. On November 3, 2006, District Court Judge James Cacheris of the Eastern District of Virginia held that the Chewy Vuiton chew toys and dog beds were permissible parodies of Louis Vuitton’s designer handbags and goods.
In the trademark infringement analysis, Judge Cacheris found Louis Vuitton’s name, marks and dress to be strong and recognizable. However, in the case of a parody, the strength of the famous mark makes it more likely that consumer confusion will be avoided. “The strong mark makes it unlikely that a parody – particularly one involving a pet chew toy and bed – will be confused with the real product.” Although the marks were similar, similarity is an essential part of the parody. The Chewy Vuiton marks were “similar enough for the average customer to recognize a humorous association with Vuitton mark, without likely confusing that same customer that it really is a Vuitton product.” The trademark infringement factors weighed heavily against a finding of likely consumer confusion.
Judge Cacheris applied the newly enacted Trademark Dilution Revision Act of 2006. This Act lowered the dilution standard for a famous mark that is widely recognized by the general consuming public of the United States. A trademark owner can now get injunctive relief by showing the challenged mark is likely to cause dilution, regardless of actual or likely confusion, competition or economic injury. Dilution is found either through the blurring of similar marks or tarnishment by likening the mark to lower quality products. The Act lists exceptions to actionable dilution, including advertising to compare goods or services, parodying, criticizing, or commenting on the famous mark, news reporting, and non-commercial use.
Louis Vuitton has appealed the case to the Fourth Circuit. The International Trademark Association filed a brief in support of Louis Vuitton’s position. They argue that Judge Cacheris improperly ignored the plain language of the Act’s exclusions and failed to analyze the statutory dilution factors. They claim that the District Court’s decision undermines the clarity that the Act was enacted to provide. This should give the Fourth Circuit something to chew on.