Should I ignore a trademark infringement threat letter?
A Missouri teenager has picked up significant publicity after he rebuked North Face’s cease and desist threat letter concerning the North Face mark. Teenager Jimmy Winkelmann says that his business, The South Butt, does not pose a trademark threat to North Face. North Face argues that the teen’s use of The South Butt mark is confusingly similar to the use of the North Face mark. The teen has applied for trademark registration of The South Butt with the US Patent and Trademark Office in International Class 035, namely, for use in association with mail order and online stores that sell clothing.
Ignoring a trademark cease and desist letter is typically not a good strategy. A cease and desist letter for trademark infringement is something that you need to take seriously, whether you have a registered mark or not.
Interestingly, the applied-for mark is seeking registration as a design plus words mark and not a character mark;
A character trademark registration grants national rights to the use of the words themselves, in this case THE SOUTH BUTT, while a design plus words mark grants rights to the use of the combination of the design and the words, but not the words themselves. Winkelmann’s attorney, who, ABC News humorously notes, plays squash with the teen’s father and traded his services for a “really good bottle of burgundy,” argues that the mark is parody.
Parody does act as a defense to trademark infringement;
Parody is considered a form of artistic expression and, as such, the public interest in free expression is weighed against the interest in avoiding consumer confusion. If the parody is political or a commentary, the First Amendment requires that a court apply the strict scrutiny test, that is, the regulation of the speech must be narrowly tailored to achieve a compelling governmental interest—in this case reducing consumer confusion.
Commercial speech is given less protection under the First Amendment. Additionally, some circuits, such as the 8th Circuit, require the court to examine whether there is a likelihood of confusion between the two marks before examining whether the parody should be protected under the First Amendment.
North Face could also file a lawsuit for trademark dilution;
Trademark dilution lawsuits require that the plaintiff own a famous and distinctive mark. A trademark dilution suit under 15 U.S.C. 1125 typically diverges into one of two types: dilution by blurring or dilution by tarnishment. Dilution by blurring occurs where the use of a similar mark impairs the source identifying function of a famous mark. Dilution by tarnishment occurs where a similar mark harms the reputation of the famous mark. There are three statutory exceptions to a dilution claim that can be used as a defense: noncommercial use, comparative advertising, or news reporting and commentary.
It doesn’t seem as if Winkelmann’s use falls into any of these categories, so it will be interesting to see how this dispute plays out. If you are wondering whether your use of a mark is parody, or if you are a mark owner who believes that your mark has been diluted or infringed upon, please contact a trademark attorney today.