Some companies seem to assume that they have the right to take someone else’s registered trademark, tweak it a little bit, and then use it for their own purposes. We do have free speech in this country, after all, right? Well, it’s not quite that simple.
For there to be parody when it comes to trademarks, it must be (1) "the original” and (2) "also that it is not the original and is instead of parody." Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc., 886 F.2d 490 (2d Cir. 1989).
Take, for example, the logo for Mutual of Omaha, an insurance company.
Now, look at this fictional Mutant of Omaha for Nuclear Holocaust Insurance.
It’s funny, it relates to insurance, and it basically uses the Native American logo of Mutual of Omaha as if it had been a victim of nuclear fallout. However, it’s not a commentary on Mutual of Omaha itself. It was an anti-nuclear protest. For social commentary, using someone else's mark as a general message that does not target the trademark owner is not okay, a court has ruled. Thus, the Mutant of Omaha infringed on Mutual of Omaha’s trademark. Mutual of Omaha Insurance Co. v. Novak, 836 F.2d 397 (8th Cir. 1987).
When a mark is used to poke fun of the product itself, this is okay parody. The band known as Aqua wrote a song in the late 90s called “Barbie Girl.” Mattel sued Aqua’s American record label for trademark infringement, upset about the use of Barbie. Here are some of the lyrics: “I’m a Barbie girl in a Barbie world / life in plastic, it’s fantastic / You can brush my hair, undress me everywhere / imagination, life is your creation.” Here, the 9th Circuit said that this was parody protected by the First Amendment. Mattel, Inc. v. Universal Music International, 296 F.3d 894 (9th Cir. 2002).
In short, a parody must be making a commentary on the goods or services sold under a mark, otherwise it may confuse the public and run afoul of trademark law. Also, if you are using a mark as a source identifier, you run the risk of infringing.
Please note that the information contained in this article is intended for general informational purposes only and not as specific legal advice. The facts of your situation may differ from this general information. It is not intended to and does not in any way establish an attorney-client relationship.
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