Saks Fifth Avenue sent a dog treat company a cease and desist letter basically telling it to change its name, or else. Where does the retail giant get the nerve to tell another company what its name should be? Well, said other company is named Snaks 5th Avenchew, which Saks says infringes on its brand. Carrie Sarabella, the owner of the pet treat company, has said that she doesn’t plan to change her company’s name by the deadline given in the cease and desist letter, so it’s entirely possible that a courtroom is in the future. In the event that these two do end up in court, here’s what you can expect …
To begin with, Saks has many registered trademarks to protect its brand name – covering a range of things, including beauty products, apparel, and retail department store services. As the proud owner of several marks related to the Saks Fifth Avenue brand, the New York-based department store has the right (and the duty, as far as we’re concerned) to police for trademark infringers. When another person or business attempts to sell goods using a name that is likely to cause confusion among consumers, it’s probable that there is trademark infringement and Saks would be right to start with a cease and desist letter and then go to court if that didn’t work.
In addition to waging a legal battle because of infringement, trademark owners can also bring actions based on trademark dilution. Under federal law, a dilution claim can only be brought if the mark is famous. Courts determine whether a mark is famous or not by considering these factors: (1) the degree of inherent or acquired distinctiveness; (2) the duration and extent of use; (3) the amount of advertising and publicity; (4) the geographic extent of the market; (5) the channels of trade; (6) the degree of recognition in trading areas; (7) any use of similar marks by third parties; and (8) whether the mark is registered. Once famousness is satisfied (as it certainly would be for Saks), the owner of a trademark can bring a dilution claim either because of blurring or tarnishment. Blurring occurs when the power of a mark is weakened through association with dissimilar goods while tarnishment occurs when the mark is cast in an unflattering light.
Protecting trademarks is an important way to distinguish one brand from all the others, but it’s also crucial in order to prevent the loss of trademark rights. If, for example, third parties use a mark to the point where it no longer indicates the source of goods, and is thus generic, trademark rights can be lost. So there’s really nothing wrong with Saks trying to protect its brand. But that doesn’t mean the department store would win in court.
As far as we see it, there’s not a persuasive argument for trademark infringement because it would be hard to show a likelihood of confusion. Consumers probably won’t to be misled into thinking that either Saks makes the dog treats or is associated with the Snaks 5th Avenchew. A better claim would be dilution through blurring and/or tarnishment. But even that might not be a winner for Saks because Sarabella can always throw out the parody defense.
Several years ago, Louis Vuitton Malletier (LVM) brought suit against a small company called Haute Diggity Dog over a line of canine products called “Chewy Vuitton”. According to LVM, the line of toys “loosely resemble miniature handbags and undisputedly evoke LVM handbags of similar shape, design, and color.” LVM’s claims included trademark infringement and trademark dilution by blurring and tarnishment.
On infringement, LVM claimed that Haute Diggity Dog’s “marketing and sale of its ‘Chewy Vuitton’ dog toys infringe its trademarks because the advertising and sale of the ‘Chewy Vuitton’ dog toys is likely to cause confusion.” The United States Court of Appeals for the Fourth Circuit disagreed, finding that the “Chewy Vuitton” toys were not likely to confuse consumers into thinking that LVM created the toys or was affiliated with Haute Diggity Dog. The court noted that the dog toys were successful parodies, which influences the way the likelihood of confusion test is applied because “an effective parody will actually diminish the likelihood of confusion.” Ultimately, the court said, LVM failed to show a likelihood of confusion.
Turning to the issue of dilution by blurring, the court began by nothing that “parody is not automatically a complete defense to a claim of dilution by blurring where the defendant uses the parody as its own designation of source, i.e., as a trademark.” That said, the court did point out that parody is relevant to the overall dilution question and imposed on LVM an “increased burden to demonstrate that the distinctiveness of its famous marks is likely to be impaired by a successful parody.” The court concluded that LVM failed to make a case for dilution by blurring because it did not establish that “the distinctiveness of its marks was likely to be impaired by Haute Diggity Dog’s marketing and sale of its ‘Chewy Vuitton’ products.”
Dilution by tarnishment required a showing that the “Chewy Vuitton” toys harmed LVM’s reputation. The argument made by LVM was that the possibility that a dog could choke on a toy causes harm. The court disagreed and found that LVM “provided no record support for its assertion.”
So, all in all, Haute Diggity Dog’s victory does not bode too well for Saks. Time will tell if we’re destined to see a Saks v. Snaks showdown in court.
JENNIFER WILLIAMS is a recent law school graduate who writes about fashion, the legal avenues available for protecting it, and the ways in which the laws are falling short. She is currently awaiting admission to the NY State Bar. For more from Jennifer, follow her on Twitter.