Carrie Sarabella must have a sense of humor. She is the entrepreneur behind SNAKS FIFTH AVENCHEW, an organic doggie treat manufacturer. The play on the brand Saks Fifth Avenue is pretty clever. The department store doesn’t see it quite the same way however, as it sent cease and desist letters to the New Jersey based Sarabella. This wasn’t enough to make Sarabella roll over though and it appears that Saks is now backing down from its challenge.
Snaks Fifth Avenchew advertises itself as a seller of natural dog and horse foods, with a particular emphasis on accommodating allergies and supporting joint health. The company offers customers monthly boxes of treats with convenient delivery. The company is small, but has a website and a Facebook page. This online presence attracted the attention of Saks Fifth Avenue, a large, well known company that is undoubtedly protective of its brand.
In the cease-and-desist letter, Saks cited its trademark registration on Saks Fifth Avenue and claimed that Sarabella’s use of Snaks Fifth Avenchew infringed its mark and diluted its brand. Sarabella hired a trademark attorney who responded to the cease-and-desist letters, arguing that Sarabella’s use falls under the “fair-use” doctrine. This responses seems to have been enough to force Saks to back down from its challenge.
The fair use doctrine permits use trademarks under special facts when it makes sense to use them and there is not a likelihood of consumer confusion. One acceptable use under the fair use doctrine is “nominative use”. This means that a trademark can be used to refer to the actual trademarked product or its source. This permits criticism, analysis and comparative advertising with respect to the trademark product or service.
Another form of fair use is parody. The rationale behind parody under trademark fair use includes free speech rights under the first amendment and the low probability of consumer confusion. Sarabella’s trademark attorney’s response cited successful trademark infringement defenses relating to “Tommy Holedigger” and “Chewy Vuitton”, two pet product manufacturers that fought off trademark registration challenges from well established brands.
In each of these cases, the courts decided that consumers were not likely to confuse the parody with the actual brand. This is consistent with the reasoning behind trademark law – to protect consumers from confusion. Consequently, where there is little risk of confusion, courts are not likely to find trademark infringement. Apparently, Sarabella made compelling enough arguments for Saks to back down.
Even small entrepreneurs like Sarabella can quickly find themselves in trademark trouble. It pays to have an experienced trademark attorney on your side. If you have questions about the trademark process or are ready to file a trademark application, please contact the trademark attorneys at Trademark Access. Let our experience protect your valuable brand.
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