Everyone who knows me knows I love two things more than anything in this world: animals… and puns. And, to my delight, much of the pet industry considers using puns as something of a religion. You’ve all seen this, with groan-worthy names of pet stores, doggie daycares, and treat makers. And because the world simply can’t be a fun place in which to exist, sometimes these punny names cause intellectual property disputes, such as when the Prosecco people managed to oppose a trademark for a pet treat named “Pawsecco”, or when a real-life human being hotel called the Chateau Marmont sent a cease and desist notice to the Cateau Marmont, a hotel for, I don’t know… raccoons?
And now one fashion designer has decided to oppose the trademark for a maker of parody pet clothing, arguing ostensibly that the public both cannot tell the difference between human clothes and pet clothes, as well as that this same public doesn’t have a sense of humor.
While Demna Gvasalia has been preparing for Balenciaga’s Spring/Summer 2019 runway show, the brand’s legal team has been readying for a fight. Counsel for the Paris-based brand moved to oppose a pending U.S. trademark application for registration this week, taking issue with “Pawlenciaga,” a trademark that is being used by Pawmain Pets, a North Carolina-based company in the business of making what it calls “parody streetwear for your pets.”
According to the opposition that Balenciaga filed on Monday, Pawmain Pets’ “Pawlenciaga” trademark – if registered for use on leather goods, as Pawmain has proposed – “will cause confusion, mistake and deception with respect to those goods, by virtue of [Balenciaga’s] prior registration, use and fame of its Balenciaga trademarks, including [on leather goods].” Moreover, Balenciaga alleges that Pawmain’s proposed registration “would substantially harm [Balenciaga]” and “is likely to cause confusion” with Balenciaga’s trademark rights, which date back to at least 1975.
It’s quite a bold argument for a high-end fashion designer to insist that a puntastic name is all that’s needed to confuse the public between its goods and those made for animals. One would think that the quality of the product might do some work to stave off such confusion, but apparently not. Still, the average buyer of pet-goods, particularly such luxury items as pet clothing, will be well-acquainted with the long and glorious tradition of puns and parody in the pet industries. It seems laughably unlikely that anyone is actually going to be confused as to the product source or association.
Now, while the USPTO has apparently never upheld a parody defense to a trademark opposition, though that defense has obviously been used a zillion times once lawsuits have been filed, it seems there is already some caselaw on the books that the USPTO might turn to as particularly relevant.
The legally-minded amongst us will already be thinking of a similar matter that precedes Balenciaga’s opposition: Louis Vuitton v. Haute Diggity Dog. In that case, Louis Vuitton sued the pets-wear company, alleging that ones of its handbag-shaped dog toys, one that was labeled “Chewy Vuiton” and that was similar in shape, monogram (“CV” vs. “LV”), repetitious design and coloring to a Louis Vuitton Speedy bag, ran afoul of trademark and copyright law. The Fourth Circuit Court of Appeals handed Haute Diggity Dog a win in 2007, holding that despite Louis Vuitton’s claims of trademark infringement and dilution and copyright infringement, Haute Diggity Dog could continue to make and sell plush dog toys that make use of famous luxury trademarks, as “Haute Diggity Dog’s parody is successful.”
That kind of makes this pretty straightforward, as it’s the exact same subject matter and industries participating in this opposition. Whether the USPTO will bother to look to that case to inform its decision is an open question. What isn’t an open question is that there was obviously no reason for Balenciaga to do this. There were plenty of other routes to take, including simply ignoring this whole thing while noting that there was little concern for customer confusion. Why it chose to go the bullying route is a question that needs to be put to the designer.
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