On May 8, 2015, the Trademark Trial and Appeal Board (the “Board”) issued a resounding blow to trademark applicants who seek to register others’ trademarks as parodies. In New York Yankees Partnership v. IET Products and Services, Inc., Opposition No. 91189692 (May 8, 2015), the Board announced that “parody” or “fair use” can never function as a defense in an opposition or cancellation proceeding at the Trademark Trial and Appeal Board because trademark applications and registrations are not “non-commercial.”
This case involved a New York company’s attempt to register the marks THE HOUSE THAT JUICE BUILT and the design mark
for various items of apparel and for mugs.
The New York Yankees opposed registration on the ground that the applied-for marks were likely to dilute the unique character of the Yankees’ registered marks THE HOUSE THAT RUTH BUILT and its “Top Hat” logo.
Section 43 of the Trademark Act (the “Lanham Act”) provides a trademark owner with remedies against “dilution” of famous trademarks. While the classic trademark infringement claim concerns the likelihood that the plaintiff’s consumers will be confused by the defendant’s use of a similar trademark for similar or related goods and services, trademark dilution is a trademark law concept giving the owner of a famous trademark standing to prevent others from using that mark in a way that would diminish its uniqueness. In most cases, trademark dilution involves an unauthorized use of another’s trademark on products that do not compete with, and have little connection with, those of the trademark owner. Dilution may occur regardless of the of the presence or absence of actual or likely confusion, of competition, or of actual economic injury. “Dilution by blurring” occurs when a substantial percentage of consumers, on seeing the junior party’s mark on its goods, are immediately reminded of the famous mark and associate the junior party’s mark with the owner of the famous mark, even if they do not believe that the goods actually emanate from the famous mark’s owner.
The Lanham Act enumerates six non-exhaustive factors a tribunal may consider in determining whether a mark is likely to cause dilution by blurring: (i) The degree of similarity between the mark or trade name and the famous mark; (ii) The degree of inherent or acquired distinctiveness of the famous mark; (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; (iv) The degree of recognition of the famous mark; (v) Whether the user of the mark or trade name intended to create an association with the famous mark; (vi) Any actual association between the mark or trade name and the famous mark.
In this case, the Yankees had no trouble establishing that its marks are unique, distinctive, and famous. The Yankees have used the Top Hat design mark for more than 50 years and have used the mark on apparel for more than 40 years. The Top Hat design is displayed at Yankee Stadium which, during home games, are broadcast nationwide on national networks. Wholesale sales in the United States of Yankees team-licensed products bearing trademarks associated with, promoting or identifying the Yankees team, including the Top Hat design, amount to approximately $1.5 billion.
Similarly, THE HOUSE THAT RUTH BUILT was found to be famous. The applicant in this case admitted that the Yankees’ baseball stadium had been known as THE HOUSE THAT RUTH BUILT since 1923, and that it “is one of the most famous and well-known of all the baseball stadiums” in Major League Baseball. The phrase THE HOUSE THAT RUTH BUILT, has been widely used by the public and the press.
The Board quickly noted that there was a high degree of similarity between the applicant’s marks and the Yankees’ famous marks. Thus, the key element of this case involved the fifth and sixth prongs of the dilution test, namely, whether the applicant intended to create an association with the Yankees’ famous mark. The applicant argued that § 43 of the Lanham Act mandates that its parody marks are non-actionable. Section 43 states, in relevant part:
(c) Dilution by Blurring; Dilution by Tarnishment.–
(3) Exclusions.–The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:
(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with—
(i) advertising or promotion that permits consumers to compare goods or services; or
(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.
(B) All forms of news reporting and news commentary.
(C) Any noncommercial use of a mark.
The applicant’s argument was that its design mark worked as a parody precisely because it created an association with the Yankees’ marks. However, the Board noted that the language of § 43 also explicitly limited the “fair use” exclusion to use of a famous mark “other than as a designation of source for the person’s own goods or services” (§ 43(c)(3)(A)). “Noncommercial” use also is excluded. (§ 43(c)(3)(C)).
Thus, a careful reading of this provision of the Lanham Act, along with the Lanham Act as a whole, compels the conclusion that there can be no parody/fair use defense in the context of registering a trademark with the USPTO. To obtain federal registration, an applicant’s use of the applied-for matter must be as a designation of source – i.e., as a mark – and commercial – i.e., used in commerce. See Lanham Act, §§ 1, 2, 17, 18, and 45, 15 U.S.C. §§ 1051, 1052, 1067, 1068, and 1127. The Board only adjudicates oppositions or cancellations of registrations, not cases concerning mere ornamental, expressive, or noncommercial use of trademarks.
This is instructive to those who may wish to engage in social commentary or parody, and are thinking about obtaining the exclusive rights associated with a federally registered trademark. The Board’s decision suggests that fair use and parody is still an applicable defense in cases where a party is simply printing parody logos or slogans on items (such as t-shirts, for example) and selling them. However, the Board has made it difficult to succeed in registering parody logos or slogans with the USPTO. Alternatively, if one wants exclusive rights, one can always go the Copyright route, where fair use may coexist with registration.