{"id":2181,"date":"2022-11-21T01:50:25","date_gmt":"2022-11-21T01:50:25","guid":{"rendered":"https:\/\/blogs.luc.edu\/ipbytes\/?p=2181"},"modified":"2024-07-13T06:30:34","modified_gmt":"2024-07-13T06:30:34","slug":"somethings-wrong-with-this-drip","status":"publish","type":"post","link":"https:\/\/blogs.luc.edu\/ipbytes\/somethings-wrong-with-this-drip\/","title":{"rendered":"Something’s Wrong with this Drip"},"content":{"rendered":"

Have you seen this Gucci shirt<\/a>? Does anything seem strange<\/em> about it to you? What if I told you that if you moved the dripping paint, the logo looked a bit different<\/a>?<\/p>\n

As it turns out, it wasn\u2019t even a Gucci shirt to begin with. This is a shirt sold by Nobuaki Kurokawa, a Japanese entrepreneur with a fondness for parody<\/a> (the juxtaposition of the original version of a trademark with a usually humorous, mocking, or irreverent one). He filed an application to register the \u201cCUGGL\u201d logo as a trademark<\/a> with the Japanese Patent Office (JPO)<\/a> in October of 2020. This led to a string of proceedings in which Gucci fought to stop Kurokawa\u2019s use of the CUGGL name. On July 12, 2022, Gucci lost – in Japan, at least. Let\u2019s take a closer look at why the Cuggl name has survived for now, and what might have happened had the case taken place in the United States.<\/p>\n

Making a Mark<\/strong><\/p>\n

Trademarks are a type of intellectual property consisting of words, phrases, symbols, logos, designs, or any combination of the above (sometimes called \u201cmarks\u201d for short) that identify the source of a good or service and distinguish that source from others in the marketplace. Importantly, trademarks only offer protection against other similar trademarks when there is confusion by consumers. \u00a0Even if you had the trademark name \u201cApple\u201d for selling computers, someone else could use the same name for selling coffee since consumers are unlikely to be confused.<\/p>\n

In the United States, Gucci has over a hundred different trademarks<\/a>, all protecting different aspects of the goods and services they sell. They have federally registered trademarks (marks that have passed the federal registration process and are granted national rights<\/a>) to protect \u201cGucci\u201d for handbags and purses, \u201cGG\u201d for tote bags and suitcases. The list goes on.<\/p>\n

Gucci is very proactive<\/a> in protecting its intellectual property. It came as no surprise that the Italian fashion house stepped in to oppose registration of the CUGGL mark, meaning that they tried to prevent the CUGGL mark from being registered on the grounds that it would hurt their business. \u00a0In this case, they feared that consumers would be confused about which brand the shirts came from and that Kurokawa would exploit the confusion to profit from recognition of the Gucci name.<\/p>\n

How Trademark Registration Works<\/strong><\/p>\n

Let\u2019s consider what would happen if the same registration had taken place in the U.S.\u00a0 The process of registering a trademark in the United States takes place over several months. The United States Patent and Trademark Office (USPTO)<\/a> assigns an attorney to each applied-for trademark, who reviews the mark and determines whether it is eligible to be registered. \u00a0Typically, to be registered a mark must show<\/a>: 1) that it\u2019s being used in interstate commerce (or that it will be used in commerce in the future), 2) that the mark is distinctive enough to identify a particular source of goods and\/or services, and 3) that the mark isn\u2019t barred by law (this is called being \u201cstatutorily barred\u201d). Assuming there are no issues preventing the mark from being registered, the attorney will allow the mark to be published in the USPTO\u2019s \u201cOfficial Gazette<\/a>,\u201d a publicly-accessible list of all marks waiting to be registered. Marks are published in the Gazette for thirty days. During this time, anyone can oppose the registration of the mark if they would be harmed. Typically, this means that the mark could cause confusion, weaken, or tarnish another mark, putting their business in harm. Harm to a business in this context means a variety of things. This may include a business losing sales because consumers are mistaking the company\u2019s products with another, that the name of a business loses value because other businesses have similar ones, or that a company\u2019s reputation will be hurt because another company with a similar name sells inferior products or does bad things. One of the most common reasons for opposing a trademark registration is the same reason Gucci opposed CUGGL in Japan: \u201clikelihood of confusion\u201d with an existing mark.<\/p>\n

What\u2019s Likelihood of Confusion?<\/strong><\/p>\n

At face value, \u201clikelihood of confusion\u201d is simple. If one party has a registered trademark, they have the right to oppose the registration of a similar mark being used for the same goods and services. For example, you would be unable to register the trademark \u201cApples\u201d for computers because it would be confusingly similar to the well-established tech brand. Trademark examiners, including the examiners from the JPO and the USPTO, assess a variety of factors to determine if two marks are confusingly similar. Two commonly referenced factors<\/a> are 1) whether the marks are similar in appearance, sound, and connotation, and 2) the relatedness of the marks\u2019 associated goods and services.<\/p>\n

The second factor is easy to analyze in this case. Gucci sells clothing, including t-shirts with the Gucci trademark. The CUGGL trademark is also printed on t-shirts for sale. The goods are identical for the two marks. Analyzing the first factor, though, is where things become tricky.<\/p>\n

Even though the CUGGL mark appears in the same font as Gucci\u2019s iconic logo, the names \u201cGucci\u201d and \u201cCuggl\u201d don\u2019t resemble each other at all. They don\u2019t sound the same, they don\u2019t look the same, and they don\u2019t have the same connotation when a consumer looks at them. Gucci tried to argue in its opposition that the inclusion of the paint on the bottom of the mark made distinguishing the \u201cCUGGL\u201d mark from the \u201cGUCCI\u201d mark more difficult. Gucci even pointed out that in commerce, Kurokawa was printing shirts with much more paint covering the word \u201cGucci\u201d to confuse consumers into thinking it was a GUCCI shirt. The Japanese Patent Office wasn\u2019t convinced. It found that there was no likelihood of consumer confusion between \u201cGucci\u201d and \u201cCuggl\u201d, dismissed Gucci\u2019s opposition, and declared that the CUGGL mark was valid.<\/p>\n

Now What?<\/strong><\/p>\n

I think Gucci has a much better argument that the \u201cCuggl\u201d mark constitutes trademark infringement. This is true in both the United States and in Japan. In the U.S., trademark infringement creates liability for anyone who copies or imitates a registered trademark for use in commerce in a way that is likely to confuse consumers. Japanese patent law similarly prevents anyone from using a trademark similar to a registered one on goods or in commerce.<\/p>\n

Gucci has a strong case that Kurokawa is infringing on its registered trademarks in Japan. Viewing the t-shirts Kurokawa sells, the \u201cCuggl\u201d name is virtually indistinguishable from the Gucci brand unless you are aware that the shirt is meant to be a fun parody of the more-famous Italian brand. Speaking personally, I\u2019m so out of the loop when it comes to fashion that I would interpret Kurokawa\u2019s t-shirts as a new \u201cavant-garde\u201d Gucci style that I\u2019m too unfashionable to understand.<\/p>\n

Too Big to Fail?<\/strong><\/p>\n

Is there anything else Gucci could have done? In the United States, at least, Gucci could have opposed registration of the CUGGL mark based on \u201cdilution\u201d. Federal trademark dilution allows the holders of famous trademarks to stop the use of other marks that might weaken, or \u201cdilute,\u201d the strength of their brand – even if there is no likelihood of consumer confusion. <\/strong>This is because the more similar names there are to a famous brand, the less value the brand name has in distinguishing itself from others. \u00a0<\/strong>For example, dilution would prevent me from registering the trademark \u201cMcDonald\u2019s Sneakers\u201d as the manufacturer of sneakers even if no consumer thought I was affiliated with the larger, internationally recognized McDonald\u2019s.<\/p>\n

Nobody would think that I was affiliated with McDonalds. That\u2019s not what dilution is about, though. \u00a0Imagine if there were dozens of \u201cMcDonald\u2019s\u201d in lots of different goods, including planes, cars, and laundry. Then the original McDonald\u2019s name wouldn\u2019t have as much value. Japanese trademark law has a similar provision but uses the wording \u201cwidely recognized\u201d instead of \u201cfamous.\u201d<\/p>\n

Had this case taken place in the U.S., it\u2019s arguable that Gucci could have opposed Kurokawa\u2019s mark on these grounds. U.S. law specifies a number of factors for courts to consider in determining dilution by blurring, as in the example here.\u00a0 Some factors include the degree of recognition the famous mark has and whether the user of the potentially infringing mark intended for their mark to be associated with the more famous one.<\/p>\n

Again, it\u2019s fuzzy whether this argument would have succeeded the mark because the entire \u201cCuggl\u201d name was visible when the mark was published for registration. It would be difficult to argue that Kurokawa intended for his mark to be associated with Gucci when the word \u201cCuggl\u201d is almost entirely visible. It\u2019s the use of the mark on the shirts that\u2019s the issue here.<\/p>\n

It\u2019s Just a Prank, Though<\/strong><\/p>\n

Legalese and \u201clikelihood of consumer confusion\u201d aside, it\u2019s obvious that Kurokawa knew exactly what he was doing. Need more proof? He\u2019s sold other parody shirts, sometimes using the same trick<\/a>, imitating a variety of different brands<\/a>. He even lost<\/a> a similar dispute before the Japanese Patent Office earlier this year.<\/p>\n

Whether the CUGGL mark is a parody or not isn\u2019t the issue.\u00a0 The question is, how does parody work in trademark law? Parody turns a \u201clikelihood of confusion\u201d analysis on its head. When assessing the likelihood of confusion between two marks, typically the first question to ask is, \u201chow similar is the connotation?\u201d With a parody, however, the entire point is to conjure up the mental image of the other trademark. There\u2019s supposed to be a similarity.\u00a0 If a consumer doesn\u2019t recognize the brand being parodied because it\u2019s been modified to be dissimilar, they\u2019ve either missed the joke, or the parody has failed.\u00a0 In the United States, whether a name is a parody or not is a key factor in assessing the likelihood of confusion between two very similar, if not identical marks for a claim of trademark infringement.\u00a0 If it is considered a parody that is actually criticizing the original, courts typically find no confusion since the parody tends to reinforce the original, rather than cause confusion.<\/p>\n

Parody is also relevant to dilution.\u00a0 And, unlike in the case of trademark infringement, it can be a complete defense to dilution so long as the parody isn\u2019t for commercial use and isn\u2019t being used as a registered trademark. Because Kurokawa is using the CUGGL name both commercially and as a registered trademark, he wouldn\u2019t be able to claim parody as a defense.<\/p>\n

I don\u2019t think it\u2019s a stretch to say that the CUGGL shirts are out-of-line as far as parody goes. There\u2019s a difference between using a play-on-words clearly meant to be a playful spin on popular brands (this one<\/a> is my favorite) and covering half of a word to transform it into another brand. In the latter case, you could argue (as Gucci does) that use of the name is preying upon consumer recognition of a more famous brand. Even though I don\u2019t think the parody is malicious in nature here, it probably goes too far. I also doubt the JPO would construe Kurowaka\u2019s parodies as trying to prey on Gucci\u2019s reputation in a malicious way, especially given that Kurokawa\u2019s parodies have appeared in proceedings before the JPO before.<\/p>\n

Next Steps<\/strong><\/p>\n

Given that Kurokawa runs a small business local to Japan, it\u2019s unlikely that Gucci will ever need to address this \u201cCuggl\u201d issue in the United States. It\u2019s impossible to say for sure what would have happened had the case been tried at the USPTO. Even though trademark law exists around the world, countries can come to different conclusions despite the laws being similar. For now, we\u2019ll need to wait and see how Gucci handles this parody situation in Japan and whether other companies affected by this type of parody respond in a similar way.<\/p>\n

\"\"<\/p>\n

Connor Druhan<\/em>
\nAssociate Blogger<\/em>
\nLoyola University Chicago School of Law, J.D. 2024<\/em><\/p>\n

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Have you seen this Gucci shirt? Does anything seem strange about it to you? What if I told you that if you moved the dripping paint, the logo looked a bit different? Continue reading Something’s Wrong with this Drip<\/span><\/a><\/p>\n","protected":false},"author":50,"featured_media":2350,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[11],"tags":[125,136,221,322],"class_list":["post-2181","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-trademarks","tag-gucci","tag-infringement","tag-parody","tag-trademarks"],"_links":{"self":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts\/2181","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/users\/50"}],"replies":[{"embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/comments?post=2181"}],"version-history":[{"count":4,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts\/2181\/revisions"}],"predecessor-version":[{"id":4227,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts\/2181\/revisions\/4227"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/media\/2350"}],"wp:attachment":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/media?parent=2181"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/categories?post=2181"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/tags?post=2181"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}