Louis Vuitton v. Haute Diggity Dog
507 F.3d 252 (4th Cir. 2007)
United States Court of Appeals for the Fourth Circuit
Facts: Louis Vuitton (P), a French corporation, manufactures luxury luggage, handbags, and accessories. Louis Vuitton also markets a limited selection of luxury pet accessories—collars, leases, and dog carries—which bear P’s trademarked Monogram Canvas Mark and Multicolor design. Haute Diggity Dog (D), a Nevada corporation, manufactures and sells pet products nationally. Haute Diggity dog’s “Chewy Vuiton†dog toys loosely resemble miniature handbags that are of similar shape, design, and color of P’s handbags. In lieu of the LOUIS VUITTON mark, the dog toy uses “Chew Vuitonâ€; in lieu of the LV mark, it uses “CVâ€; and the other symbols and colors used are imitations, but not exact ones, of those used in the P’s designs.
P’s allegation: Louis Vuitton alleges trademark infringement and trademark dilution.
Procedure: The district court concluded that D’s dog toys were successful parodies of P’s TMs, designs, and products, and entered judgment in favor of D on all of P’s claims. P appealed.
TM Infringement Allegation
Rule: In order to prevail on a trademark infringement claim for registered trademarks, or unregistered trademarks, a plaintiff must establish that:
1. It has a valid mark that is entitled to protection under the Lanham Act; and
2. That the Defendant used the mark,
3. In Commerce,
4. “In connection with the sale . . . or advertising of goods or services,
5. Without the Plaintiff’s consent, AND
6. The Defendant’s use of the mark “is likely to cause confusion as to the affiliation, connection, or association of Defendant with Plaintiff, or as to the origin, sponsorship, or approval of the defendant’s goods, services, or commercial activities by the Plaintiff.
Holding: Chewy Vuiton toys were parodies that were not likely to confuse consumers
Dilution
Rule: To state a dilution claim under TM Dilution Revision Act of 2006 a P must show:
1. That the P owns a famous mark that is distinctive;
2. That the D has commenced using a mark in commerce that allegedly is diluting the famous mark;
3. That a similarity between the defendant’s mark and the famous mark gives rise to an association between the marks; AND
4. That the association is likely to impair the distinctiveness of the famous mark or likely to harm the reputation of the famous mark.
• To determine whether a junior mark is likely to dilute a famous mark, courts consider all relevant factors, including:
i. The degree of similarity between the mark or trade name and the famous mark;
ii. The degree of inherent or acquired distinctiveness of the famous mark;
iii. The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark;
iv. The degree of recognition of the famous mark;
v. Whether the user of the mark or trade name intended to create an association with the famous mark;
vi. Any actual association between the mark or trade name and the famous mark.
Holding: The court found that the first three elements of a TM dilution claim are not at issue in this case. After examining the six factors to determine whether dilution by blurring has been shown, the court found that the six factors weigh in favor of the D.
Tarnishment
Rule: To establish a claim for dilution by tarnishment, a plaintiff must show that the defendant’s use of its mark harms the reputation of the plaintiffs’ mark.
Holding: Although P argued that the possibility that a dog could choke on a “Chewy Vuiton†toy causes tarnishment, the court found that there was no tarnishment because the plaintiff provided no record to support its assertion.
Conclusion: The judgment of the district court is AFFIRMED.
507 F.3d 252 (4th Cir. 2007)
United States Court of Appeals for the Fourth Circuit
Facts: Louis Vuitton (P), a French corporation, manufactures luxury luggage, handbags, and accessories. Louis Vuitton also markets a limited selection of luxury pet accessories—collars, leases, and dog carries—which bear P’s trademarked Monogram Canvas Mark and Multicolor design. Haute Diggity Dog (D), a Nevada corporation, manufactures and sells pet products nationally. Haute Diggity dog’s “Chewy Vuiton†dog toys loosely resemble miniature handbags that are of similar shape, design, and color of P’s handbags. In lieu of the LOUIS VUITTON mark, the dog toy uses “Chew Vuitonâ€; in lieu of the LV mark, it uses “CVâ€; and the other symbols and colors used are imitations, but not exact ones, of those used in the P’s designs.
P’s allegation: Louis Vuitton alleges trademark infringement and trademark dilution.
Procedure: The district court concluded that D’s dog toys were successful parodies of P’s TMs, designs, and products, and entered judgment in favor of D on all of P’s claims. P appealed.
TM Infringement Allegation
Rule: In order to prevail on a trademark infringement claim for registered trademarks, or unregistered trademarks, a plaintiff must establish that:
1. It has a valid mark that is entitled to protection under the Lanham Act; and
2. That the Defendant used the mark,
3. In Commerce,
4. “In connection with the sale . . . or advertising of goods or services,
5. Without the Plaintiff’s consent, AND
6. The Defendant’s use of the mark “is likely to cause confusion as to the affiliation, connection, or association of Defendant with Plaintiff, or as to the origin, sponsorship, or approval of the defendant’s goods, services, or commercial activities by the Plaintiff.
Holding: Chewy Vuiton toys were parodies that were not likely to confuse consumers
Dilution
Rule: To state a dilution claim under TM Dilution Revision Act of 2006 a P must show:
1. That the P owns a famous mark that is distinctive;
2. That the D has commenced using a mark in commerce that allegedly is diluting the famous mark;
3. That a similarity between the defendant’s mark and the famous mark gives rise to an association between the marks; AND
4. That the association is likely to impair the distinctiveness of the famous mark or likely to harm the reputation of the famous mark.
• To determine whether a junior mark is likely to dilute a famous mark, courts consider all relevant factors, including:
i. The degree of similarity between the mark or trade name and the famous mark;
ii. The degree of inherent or acquired distinctiveness of the famous mark;
iii. The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark;
iv. The degree of recognition of the famous mark;
v. Whether the user of the mark or trade name intended to create an association with the famous mark;
vi. Any actual association between the mark or trade name and the famous mark.
Holding: The court found that the first three elements of a TM dilution claim are not at issue in this case. After examining the six factors to determine whether dilution by blurring has been shown, the court found that the six factors weigh in favor of the D.
Tarnishment
Rule: To establish a claim for dilution by tarnishment, a plaintiff must show that the defendant’s use of its mark harms the reputation of the plaintiffs’ mark.
Holding: Although P argued that the possibility that a dog could choke on a “Chewy Vuiton†toy causes tarnishment, the court found that there was no tarnishment because the plaintiff provided no record to support its assertion.
Conclusion: The judgment of the district court is AFFIRMED.