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“Chewy Vuitton” – Louis Vuitton, famous for its luxury goods, objected to the name “Chewy Vuiton,” which was used on stuffed toys and dog bed pillows. In this case, the smaller company, Haute Diggity Dog, marketed pet products that “parody” or make fun of luxury brands, including for example “Dog Perignon” and “Chewnel .5.” Louis Vuitton filed a trademark infringement lawsuit – and lost. See: Louis Vuitton Malletier S. A. v. Haute Diggity Dog, LLC, 2007 WL 3348013 (4th Cir., Nov. 13, 2007; affirmed by Appeals Court on December 5, 2007). The legal standard is “likelihood of confusion.” The Judge’s ruling stated that “The fact that the real Vuitton name, marks and dress are strong and recognizable makes it unlikely that a parody – particularly one involving a pet chew toy and bed – will be confused with the real product.” The victory was costly. It is reported to have cost Haute Diggity Dog over $200,000 in legal fees, and significant loss of business. So, what’s a smaller company to do? (1) Avoid problems. Don’t pick a name that’s too close to a famous name. Unless your business really is built on a parody concept, you’ll want to avoid choosing a name that sounds like a famous mark. For a discussion of the outcome of some other name disputes see: http://www.smartfast.com/enews/ea_naming_disputes.html (2) Protect your name/brand. Take steps to protect your business name or brand by registering the domain name(s) and trademark(s) for your business. (3) Be careful how you use another Company’s mark. It can be OK to use someone else’s mark in certain instances – called “descriptive fair use” and “nominative fair use.” It is acceptable to use a famous mark in comparative advertising, news reporting and non-commercial uses. It is not acceptable to use a mark in a way that implies endorsement, sponsorship or appears to be “passing off” your goods or services as those of the well-known trademark owner. For example, in Playboy v. Wells, 279 F. 3rd 796 (9th Cir 2002), the court found that Terri Wells, a former playmate, used the Playboy trademark in a descriptive way on her website and had no intention of benefiting from Playboy’s goodwill. The court held that the use was fair. (4) Use a disclaimer. Here’s an example: “Please note that this Haute Diggity Dog designer parody product is not affiliated, designed or manufactured by Dom Perignon.” In conclusion, while famous brands have valid reasons to protect their brands from counterfeiters, they go too far in attacking smaller companies that are not threatening their business. We can be thankful that Haute Diggity Dog fought and won – because that establishes the law. Smaller companies have to be creative to fight big companies with deep pockets. You’re much better positioned if you’ve acted wisely, with good legal advice. If you can’t afford the legal battle, there are a number of other alternatives. For example, see the discussion about Microsoft’s dispute with teenager Mike Rowe about his website mikerowesoft.com, at http://www.cnn.com/2004/TECH/internet/01/19/offbeat.mike.rowe.soft.ap/ Jean D. Sifleet, Esq., CPA Big firm expertise - Small firm accessibility® P.S. My business is built on referrals. It’s always a pleasure to receive a phone call that starts with, “I was referred to you by ______________.” Thanks for thinking of me when you hear someone has a business issue. Feel free to forward this eNews to a friend or colleague who you think would benefit from the information. eNews
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