Balenciaga v Pawlenciaga US trade mark opposition parody defence
Written by Samuel O'Toole on 27 September 2018« Return to Reading Room
Balenciaga is a luxury fashion brand and was once referred to as “the master of us all” by Christian Dior. On the other paw Printing By Demand, LLC trading as Pawmain Pets under their Pawlenciaga brand offer streetwear for dogs which “offers quality apparel for your four legged hypebeasts”.
Balenciaga is the proprietor of a number of trade marks registered with the United States Patent and Trade Mark Office (USPTO), such as word mark BALENCIAGA (Serial Number: 72450041) which was filed in February 1973 and registered for use with goods relating to clothing. Balenciaga claim to have a considerable amount of goodwill and recognition for its trade marks for clothing and accessories.
Pawmain Pets have filed the word mark ‘Pawlenciaga’ with the USPTO for use with: Pet clothing, namely, hoodies, tee shirts, polo style shirts, button down shirts, jackets, vests, scarves. The Pawlenciaga application was filed in February 2018 and you guessed it, it has been opposed by Balenciaga at the US Trademark Trial and Appeal Board (TTAB).
You can see the full opposition document here (http://ttabvue.uspto.gov/ttabvue/v?pno=91243773&pty=OPP&eno=1), and in short Balenciaga claim that the registration of the Pawlenciaga mark would dilute or would be likely to dilute the distinctive character of the Balenciaga trade marks by blurring and/or tarnishment.
Interestingly, the opposition also claims that the registration of the Pawlenciaga mark would cause confusion. One can only presume that this confusion would arise in the minds of both dogs and humans.
It is likely that Pawmain Pets will attempt to claim some form of parody defence against the trade mark opposition. However, it should be noted that a TTAB are very unlikely to uphold a parody defence, it has been claimed that they have never upheld such a defence.
In Federal court, parody defences have been accepted. In the case of Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC No. 06-2267 Haute Diggity Dog’s "Chewy Vuiton" dog toys were successful parodies of Louis Vuitton Malletier’s trademarks, designs, and products.
It truly is a dog eat dog world at the USPTO
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