In recent USPTO news, Trader Joe’s, the supermarket chain known for its eclectic and unique foodstuffs, recently filed an opposition to registration of the mark “Trader Schmo,” which is described as designating a wide variety of Kosher foods. Understandably, Trader Joe’s took issue with the mark, and particularly its use in the food category. The company instituted an opposition (which I cannot help but note is #999,999), arguing that “Trader Schmo” will confuse consumers because consumers will naturally switch “Joe’s” with “Schmo,” given the popular phrase “Joe Schmo.”

This is not the first time Trader Joe’s has taken legal action to protect its brand. Notably, just a couple years ago the company sued “Pirate Joe’s,” a counterfeiter with a backstory almost too unbelievable to be true. Pirate Joe’s was a “rebel Canadian grocery operation,” which bought Trader Joe’s products in the United States and “smuggle[d] them across the border to Vancouver” to sell them. Pirate Joe’s eventually ran aground under the immense pressure of its legal fees.

Pirate Joe’s Comes Crashing Down, Credit: Georgia Straight

This new dispute reminds me of the famous “Dumb Starbucks” experiment by comedy TV series Nathan For You. Over one weekend in 2014, the show opened a coffee shop that looked just like a real Starbucks, except that its name and every drink it sold was preceded by the word “dumb.” The comedian behind the prank (or “art“) claimed that “Dumb Starbucks” was permissible fair use because both the use of the Starbucks mark, as well as the store itself, was one big parody. One cannot help but notice some parallels to Trader Schmo; the latter word refers to a hypothetical “dumb” person.

Comedian Nathan Fielder, Credit: New Yorker

Dumb Starbucks and Trader Schmo raise difficult questions about permissible comedic use under trademark law. On the one hand, the marks free ride on the notoriety of other marks, bringing attention. On the other, it seems unlikely the marks would cause actual consumer confusion, making them harmless jokes. Whether Trader Schmo runs afoul of the Lanham Act will likely depend on two major inquiries: (1) whether it constitutes infringement or dilution, and (2) whether statutory fair use defenses apply.

InfringementPreviously on this blog, I explained that infringement usually centers on likelihood of confusion, which is evaluated using a variety of factors:

whether the use is related, the strength of the mark, proximity of the use, similarities of the marks, evidence of actual confusion, marketing channels employed, the degree of care likely to be exercised by consumers, the user’s intent in selecting the mark, and the likelihood of expansion of product/service lines.

The factors could support a finding of infringement here. The uses are related (food). The strength of the Trader Joe’s mark rides the line between arbitrary and fanciful to descriptive; who is Trader Joe in the abstract, and what does he sell? Surely the marks are similar…sounding. But on the other hand, would an average Joe really mistake Trader Schmo for Trader Joe’s? As a counter, though, it seems reasonable to infer that Trader Schmo was selected because it is similar to Trader Joe’s.

Dilution: So there might be infringement. How about dilution? This occurs when the similarity between the accused mark and a famous mark is likely to impair the distinctiveness or reputation of the famous mark. Dilution does not require any actual or likely consumer confusion. Depending on how good Trader Schmo’s Baba Ganoush, Gefilte fish, Matzo ball soup, and Borscht taste, Trader Joe’s could have an argument for dilution–especially if Trader Schmo’s grows large enough to undermine the distinctiveness of Trader Joe’s as a famous brand.

Fair Use: Generally speaking, the fair use provisions for infringement and dilution both require: (1) that the accused mark be used in a descriptive sense and not as a mark, and (2) that use of the accused mark be fair and in good faith. However, fair use does not provide a defense to infringement if there is likelihood of confusion–but we’ll gloss over that for now.

First, Trader Schmo could arguably be descriptive, delineating traded products. And the word ‘schmo’ has Jewish roots, which could describe the Kosher foods the mark designates. On the other hand, Trader Schmo isn’t inherently descriptive in that it actually describes a product or a characteristic or quality (e.g., Vision Center, a store for glasses). And it’s being used as a mark. So fair use might not even apply.

Assuming descriptiveness, the second element (the ‘fair’ aspect of the doctrine of fair use) often implicates the kinds of First Amendment interests that protect parody, satire, and criticism. But there’s no indication that Trader Schmo is intended to comment on Trader Joe’s. Moreover, courts have rejected the idea that a use is “fair” or in good faith if its similarity to a protected mark is deliberately concocted to garner attention. Trader Joe’s could have a good case for that here–just as Starbucks likely had against Dumb Starbucks.

A high-level analysis of the Trader Schmo mark suggests it could constitute infringement or dilution and is not fair use. This conclusion underscores trademark law’s general distaste for humor when it comes to commerce, as opposed to actual social commentary and comparison.

Check out this City of Atlanta Facebook page.  The funny thing is that it’s not run by the City of Atlanta.  Although the posts are titled “City of Atlanta” and use the City’s official seal, the page consists of satirical humor composed by Ben Palmer, an Atlanta resident.  Although the first post was only a couple weeks ago, the page is quickly growing in popularity, with over 27,000 likes as of today.  For example, see the most recent post by the “City of Atlanta” about building another football stadium:

Atlanta Facebook Satire Photo1

Here are a couple other examples:

“We have invested 90 million dollars in a trolley system that will allow citizens to travel 10 whole blocks in a total of 3 hours.”

“Our homicide investigation unit has relocated to the inside of Kroger, next to the sample lady. Please be mindful of this as you do your grocery shopping.”

Two days ago, the actual City of Atlanta informed Ben Palmer that it did not find his page very funny.  More specifically, the City sent a demand letter to Mr. Palmer, informing him that the City had requested Facebook to remove any use of the City’s seal.  The City’s seal is a federally registered trademark (Reg. No. 3089604):

City of Atlanta Seal

The Facebook page uses a modified version of the seal, with the addition of a stylish top hat and a monocle:

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The City’s demand letter stated:

“The owner of the satirical City Facebook page was not authorized to use the City’s trademark. We are working with Facebook to remove the City Seal and any other information on the Facebook page that might confuse or mislead the public into believing that the page or its contents represent the positions, policies or practices of Atlanta City Government.”

Mr. Palmer responded with some more tongue-in-cheek satire on the Facebook page, referring to his commonly invoked criticism of the city trolley:

“If you make a satirical Facebook page mocking the city of Atlanta, you will be charged with a serious crime that is punishable up to 3-5 years in prison or be force[d] to ride the trolley.”

In the two days since the City’s demand letter, Mr. Palmer has continued to use the City’s seal.  If the City decides to file an infringement lawsuit, it will raise interesting questions regarding satirical or parodying uses of trademarks.

In some courts, trademark parody or satire is not a defense per se to trademark infringement, but rather something to consider in the likelihood-of-confusion analysis.  For example, one court held that a trademark parody of baseball cards did not infringe because the effect was “to amuse rather than confuse,” and no one would mistake the Major League Baseball Player’s Association (MLBPA) “as anything other than the targets,” not the origin, of the parody cards.  Cardtoons, L.C. v. Major League Baseball Players’ Ass’n, 95 F.3d 959, 967 (10th Cir. 1996). Another court has stated that “[t]he strength and recognizability of the mark may make it easier for the audience to realize that the use is a parody and a joke on the qualities embodied” in the trademark. Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 416 (S.D.N.Y. 2002).  See also, for example, MasterCard Int’l Inc. v. Nader 2000 Primary Comm., No. 00 Civ. 6068, 2004 WL 434404 (S.D.N.Y. Mar. 8, 2004) (concluding that Ralph Nader’s “priceless” political ads did not infringe MasterCard’s trademarks).

Other courts apply a parody/satire distinction similar to the fair use analysis in copyright cases (see Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577–78 (1994)), under which courts may hold that parodies are less likely to infringe a trademark than satires.  Some commentators have criticized the creep of the Campbell copyright fair use test into trademark case law, stating that “reliance on Campbell to aid trademark infringement analysis tends to obscure the ultimate issue in any infringement case: the likelihood of confusion.”  Bruce P. Keller & Rebecca Tushnet, Even More Parodic than the Real Thing: Parody Lawsuits Revisited, 94 Trademark Rep. 979-1016 (2004).  Keller and Tushnet further explain:

“[T]he parody/satire divide is unhelpful in addressing the central question in trademark infringement cases: whether the defendant’s use is likely to cause confusion among a substantial number of consumers. If a joke is recognizable as a joke, consumers are unlikely to be confused, and whether the butt of the joke is society at large, or the trademark owner in particular, ought not to matter at all.”

Here, it appears that Mr. Palmer’s Facebook page could have elements of both parody (modifying the City’s seal by adding a top hot and a monocle) and satire (making humorous criticisms of the City through the posts), which could lead to an interesting analysis if a lawsuit arises.  Stay tuned to see how this situation develops.

 

–Susan Perera, Attorney

Like most 20-somethings who went to college during the rise of this social media monster, I am quite familiar with Facebook. However, I wasn’t aware of the website Lamebook until the current legal dispute began. Lamebook, a self-proclaimed, “humor blog” was designed to allow people to share the most “ridiculous” things posted on Facebook. The Lamebook website is a satirical reflection of Facebook using similar colors, layout, and a variation of the Facebook mark.

Facebook, apparently not one to take a joke, requested that Lamebook cease use of its highly similar looking website and mark. The confrontation has led both parties to file lawsuits regarding the matter.

Facebook has made news in the past by going after websites with similar names such as Placebook and Teachbook, but this may be the first time they have gone up against a parody site. And, based on a cursory look at the matter, I would say Lamebook has a pretty good argument for fair use as a parody, which is protected under the First Amendment.

This dispute comes at the heels of another well-known trademark parody earlier this year, when The North Face sued The South Butt (discussed on DuetsBlog by Brent Lorentz and guest blogger Jason Voiovich). During that dispute, The South Butt received a bit of notoriety and publicity while The North Face braved some media criticism for going after the little guy. A few months ago the North Face dispute ended in an undisclosed settlement agreement, after which The South Butt has continued to run its website selling its parody apparel.

So what are brand owners to do when they face a distasteful parody? They might do well in ignoring it. Most consumers would have never known of The South Butt or Lamebook had these suits not been brought.  Especially in the case of a “small potatoes” website, making a ruckus might only provide free press for that which you’re trying to suppress.

What are your thoughts on Lamebook and parody sites?