Home » Trademark Law Updates » New Judicial Opinions » Current Summary
Trademark Law Summary
4th Circuit: No Likelihood of Confusion Between “Chewy Vuiton” and “Louis Vuitton” Trademarks
Louis Vuitton Malletier, S.A. v. Haute Diggity Dog, LLC, et al.
No. 06-2267, 2007 WL 3348013, C.A.4 (Va.), 11/13/2007
Companies Mentioned: Haute Diggity Dog, LLC, International Trademark Association, Louis Vuitton Malletier S.A., Woofies, LLC d.b.a. Woofie’s Pet Boutique
Holding
In this case for trademark infringement and dilution, the U.S. Court of Appeals for the Fourth Circuit held that defendant’s “Chewy Vuiton” dog toy products did not infringe plaintiff’s “Louis Vuitton” trademark since there was no likelihood of confusion between the two marks. In so holding, the Fourth Circuit found that defendant’s product was a successful parody on the basis that defendant appropriately mimicked a part of the LVM marks. At the same time, defendant sufficiently distinguished its own product to communicate the satire. In ruling against plaintiff, the FourthCircuit found that the differences were “sufficiently obvious and the parody sufficiently blatant that a consumer encountering a ‘Chewy Vuiton’ dog toy would not mistake its source or sponsorship on the basis of mark similarity.” The Fourth Circuit thus affirmed the district court’s summary judgment of non-infringement and non-dilution.
Detailed Summary
Louis Vuitton Malletier S.A., a French corporation located in Paris, that manufactures luxury luggage, handbags, and accessories, commenced this action against Haute Diggity Dog, LLC, a Nevada corporation that manufactures and sells pet products nationally, alleging, among other claims, trademark infringement under 15 U.S.C. § 1114(1)(a), and trademark dilution under 15 U.S.C. § 1125(c).
On the other hand, defendant Haute Diggity Dog manufactures, among other things, plush toys on which dogs can chew. It claims that its products parody famous trademarks on luxury products, including those of Louis Vuitton Malletier. Its Haute Diggity Dog’s “Chewy Vuiton” dog toys, in particular, loosely resemble miniature handbags and undisputedly evoke LVM handbags of similar shape, design, and color. In lieu of the LOUIS VUITTON mark, the dog toy uses “Chewy Vuiton”; and in place of the LV mark, it uses “CV”. The other symbols and colors employed are imitations, but not exact ones, of those used in the LVM Multicolor and Cherry designs.
On cross-motions for summary judgment, the U.S. District Court for the Eastern District of Virginia found that Haute Diggity Dog’s “Chewy Vuiton” dog toys were successful parodies of Louis Vuitton Malletier’s trademarks, designs, and products On that basis, the court entered judgment in favor of Haute Diggity Dog on all of plaintiff Louis Vuitton Malletier’s claims. Plaintiff thus filed this appeal before the U.S. Court of Appeals for the Fourth Circuit. Given that defendant’s “Chewy Vuiton” dog toy products attempted to mimic and satirize a part of plaintiff’s trademark and trade dress, the question posed before the Fourth Circuit was whether there was a likelihood of confusion between defendant’s alleged parodies, and those of plaintiff’s widely known marks on its luxury goods.
In this appeal involving the alleged parody of a well-known mark, the Fourth Circuit defined “parody” as “a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner.” People for the Ethical Treatment of Animals v. Doughney (“ PETA ”), 263 F.3d 359, 366 (4th Cir.2001) (internal quotation marks omitted). “A parody must convey two simultaneous—and contradictory—messages: that it is the original, but also that it is not the original and is instead a parody.” Id. (internal quotation marks and citation omitted).
According to the Fourth Circuit, in order for a plaintiff to successfully establish its claim of trademark infringement, it must show likelihood of confusion. 15 U.S.C. § 1114(1)(a); CareFirst of Md., Inc. v. First Care, P.C., 434 F.3d 263, 267 (4th Cir.2006). In finding that there was no such likelihood, the Federal Circuit held that precisely because plaintiff’s ‘Louis Vuitton’ “is so strong a mark and so well recognized as a luxury handbag brand from LVM, consumers readily recognize that when they see a “Chewy Vuiton” pet toy, they see a parody.” Thus, the strength of LVM’s marks in this case does not help LVM establish a likelihood of confusion.
In concluding that Haute Diggity Dog has a successful parody, the court declared that defendant toy maker appropriately mimicked a part of the LVM marks. At the same time, defendant sufficiently distinguished its own product to communicate the satire. The differences, according to the court, “are sufficiently obvious and the parody sufficiently blatant that a consumer encountering a ‘Chewy Vuiton’ dog toy would not mistake its source or sponsorship on the basis of mark similarity.”
On the matter of trademark dilution claim, the Fourth Circuit likewise ruled against plaintiff, citing Trademark Dilution Revision Act of 2006 (“TDRA”), 15 U.S.C.A. § 1125(c) (West Supp.2007). In resolving this issue in favor of defendant, the Federal Circuit recognized that “while a defendant’s use of a parody as a mark does not support a “fair use” defense, it may be considered in determining whether the plaintiff-owner of a famous mark has proved its claim that the defendant’s use of a parody mark is likely to impair the distinctiveness of the famous mark.”
Applying this principle to this case, the court declared that Haute Diggity Dog did indeed mimic the famous marks. But it did not come as close to them as to destroy the success of its parody and, more importantly, to diminish the LVM marks’ capacity to identify a single source. Haute Diggity Dog designed a pet chew toy to imitate and suggest, but not use, the marks of a high-fashion “LOUIS VUITTON” handbag. It used “Chewy Vuiton” to mimic “LOUIS VUITTON”; it used “CV” to mimic “LV”; and it adopted imperfectly the items of LVM’s designs. In so holding, the court wrote that these uses by Haute Diggity Dog were not so similar as to be likely to impair the distinctiveness of LVM’s famous marks.
When considering the relevant factors to determine whether “blurring” is likely to occur in this case, the Court of Appeals arrived at the conclusion, as did the district court, that LVM failed to make out a case of trademark dilution by “blurring” by failing to establish that the distinctiveness of its marks was likely to be impaired by Haute Diggity Dog’s marketing and sale of its “Chewy Vuiton” products.
On the basis of this reasoning, the Fourth Circuit affirmed the district court’s summary judgment of non-infringement and non-dilution.
View a PDF of the judicial opinion.Trademark Law Commentary
Read the related Trademark Law commentary: Haute Diggity Dog Court Applies Tests in Determining What a Successful Parody Is, by D. Dennis La, Esq.
Service
Link to this article · 
Send via E-mail · 
Printable Version (opens in new window)
