Nike®, MSCHF, and Lil Nas X

MSCHF is transforming Nike® Air Max® 97s into “Satan Shoes” by changing various elements of the shoes including, allegedly, adding a drop of human blood to the fluid-filled cushioning of the shoes.

Lil Nas X and MSCHF are using the sale of the 666 pairs of shoes to take a stand against public criticism Lil Nas X has received for being gay.  

Nike has filed a lawsuit to protect its trademark rights. I haven’t read the complaint but I assume it’s based on at least one or both of the following:

  • Likely to cause confusion;[i]
  • Dilution by tarnishment of Nike’s famous marks;[ii]

Is Nike’s suit likely to be successful (as a lawsuit, not as a PR move)?[iii]

People seem to be confused into thinking Nike is associated with MSCHF’s sales of the shoes. Social media is filled with people saying they will never buy NIKE® shoes again. MSCHF is engaged in parody and parody is a defense against a claim of tarnishment,[iv] but in order to use parody as a defense, MSCHF would need to be parodying Nike or its products. The statements made by MSCHF and Lil Nas X seemed to be focused on parodying anti-gay groups and attitudes.

But is that really the way to look at this case?

This case is different from most trademark cases: MSCHF is selling NIKE® brand shoes. In the photos used to promote the Satan Shoes, you can see the Nike swoosh but that’s because they are NIKE shoes.

Does Nike have the right to prevent people from making post-sale modifications to their shoes? Do trademark rights go that far? Can Tesla require that I keep my car clean because the image of a dirty car driving down the street with a Tesla logo tarnishes the TESLA® brand? Can Lacoste stop me from making an anti-racist speech while wearing one of their shirts?

This is a much bigger issue than trademark rights and I hope it’s treated that way.


[i] 15 U.S. Code § 1125 – False designations of origin, false descriptions, and dilution forbidden

(a) Civil action

(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,

shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

[ii] 15 U.S. Code § 1125  

(c) Dilution by blurring; dilution by tarnishment

(1) Injunctive relief. Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

[iii] Public Relations isn’t my game, but I think Nike could have sought to distance themselves from the Satan Shoes while supporting the message of the campaign. A lawsuit is a powerful but crude PR tool not designed to make those types of subtle distinctions. I expect backlash against Nike for the suit.

[iv] 15 U.S. Code § 1125  

(3) Exclusions. The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:

(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with—

(i) advertising or promotion that permits consumers to compare goods or services; or

(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.

(B) All forms of news reporting and news commentary.

(C) Any noncommercial use of a mark.

Describe Colonel Sanders

Over the years, different actors have played Colonel SandersTM in commercials for KFC®. Some recent ads feature an animated Colonel Sanders on the side of KFC’s iconic bucket of chicken.

Does KFC need to get a separate trademark registration for each different image of Colonel Sanders?

Nope.

Trademark registrations protect owners from not only exact copies of their trademarks but also from any use that’s “confusingly similar.” In the case of Colonel Sanders, no one can use a static logo, an animation, or a live actor performance of someone who looks like Colonel Sanders.

What does it mean to look like Colonel Sanders?

Each registration that includes an image also includes a description of the trademark. For example, Apple, Inc.’s logo is described as “an apple with a bite removed.”

The description of the Colonel Sanders trademark in most of the registrations owned by KFC refers to a man with one or more of the following: Goatee, glasses, and bowtie.

Does that mean no one else can use an image of a man with all or some of those elements?

Nope.

Eastern Kentucky University uses an image of a man with a goatee and bowtie as a logo. The Trademark Office didn’t have a problem with it and, it appears from the Trademark Office record, neither did KFC.

Determining whether a logo is confusingly similar is a bit of an art. That said, KFC’s Colonel Sanders logo is well-protected with the registrations it already owns.

Shout out to Liz B. for asking the question that led to this blog post.

Parody or Infringement

Haute Diggity Dog® sells pet toys that call to mind famous brands such as:

  • Prada®
  • Birkin®
  • Louis Vuitton®
  • Absolut®
  • Starbucks®
  • Budweiser®
  • Cartier®
  • LaCroix®

It’s possible that Haute Diggity Dog has permission from these famous brands. If it doesn’t have permission it’s probably relying on being a non-infringing parody.

What does it take to avoid a claim of trademark infringement based on parody?

To be considered parody, you have to “convey two simultaneous – and contradictory – messages: that it is the original, but also that it is not the original and is instead a parody. To the extent that it does only the former but not the latter, it is not only a poor parody but also vulnerable under trademark law, since the customer will be confused.”[i]

Producing trademark parodies requires nerves of steel because there’s no way to be certain ahead of time if you’ve successfully conveyed two contradictory messages.

Remember, also, that parodies work well only with famous brands, which usually have the money needed to defend their rights.

Do you think the toys in the basket are successful parodies? Would you be willing to take this type of risk in your business?

Shout out to Cassandra G. for both the suggestion for this post and for the photos of the actual dog toys.


[i] Cliff Notes, Inc. v. Bantam Doubleday Dell Publishing, 886 F.2d 490, 494 (2nd Cir. 1989)

Can You Taste a Trademark?

There are 250 U.S. trademark registrations that can’t be seen.

  • Most are for trademarks you can hear.
  • Thirteen are for trademarks you can smell.
  • One extraordinary trademark can be experienced through touch.

How many registered trademarks can you experience by taste?

None. And it’s no accident. For something to function as a trademark, it has to be:

  • Non-functional; and
  • Not inherent to the goods.[1]

Imagine a stationery company trying to register a vanilla taste in the adhesive on its envelopes. First they’d have to prove the taste wasn’t added to mask the taste of the adhesive (non-functional). Then they’d have to prove the taste isn’t just how the adhesive happens to taste (not inherent). So far, no one has jumped that hurdle.

There have been nine applications for taste marks and each has been rejected:[2]

  • One for peppermint flavor for medical nitroglycerin
  • Six for beverages with different flavor combinations[3]
  • Two for orange flavor for anti-depressant tablets and pills

What’s it going to take before we have a taste mark? It’s going to need to be like the Play-Doh® smell mark. The taste will have to serve no function, not be inherent to the goods, and it’s going to need to be as well-known as the Play-Doh smell so the owner can show the taste is actually functioning as a trademark even though a consumer can’t experience the taste before purchase.

Shout out to Cassandra G. for the suggestion that led to this post.


[1] The U.S. Trademark Office Trademark Manual of Examination Procedure (TMEP) §1202.13 says this: “[I]t is unclear how a flavor could function as a source indicator because flavor or taste generally performs a utilitarian function . . .”

The same section of the TMEP also says: “[C]onsumers generally have no access to a product’s flavor or taste prior to purchase. Thus, an application to register a flavor ‘requires a substantial showing of acquired distinctiveness.’”

[2] Here’s a list of all the reasons the applications were rejected:

  • The taste or flavor performs a utilitarian function;
  • The taste or flavor can’t function as a source indicator because consumers have no access to a product’s flavor or taste prior to purchase;
  • The taste or flavor failed to function as a trademark.

[3]

  • Lavender, mint, lemon grass, and thyme
  • Lemon grass, mint, and vanilla
  • Jasmine and vanilla
  • Ginger and lemon peel
  • Cloves, cardamom, and cinnamon
  • Cinnamon and orange peel