Confusion between ButtWiper dog toy and Budweiser beer likely, says court
In Anheuser-Busch Inc v VIP Products LLC (Case 08-cv-0358, October 16 2008), a Missouri district court has preliminarily enjoined pet toy company VIP Products LLC from selling a squeeze toy for dogs that resembled Anheuser-Busch Inc’s Budweiser bottle in its colours, configuration and packaging.
VIP sold a variety of pet products that included beer-shaped squeeze toys marketed as 'O’Drools' and 'HeinieSniff’n', as well as faux soda bottles labelled 'Bark’s Woof Beer' and 'Mountain Drool'. Anheuser discovered that VIP sold a novelty item called ButtWiper and objected, claiming that consumers would be likely to confuse the toy with its famous Budweiser brand.VIP cited two earlier decisions, Louis Vuitton Malletier SA v Haute Diggity Dog LLC (507 F3d 252 (2007)) and Tommy Hilfiger Licensing Inc v Nature Labs LLC (221 FSupp2d 410 (2002)) in support of its defence that its toys were permissible parodies of Budweiser beer. In those cases, federal courts found that Tommy Holedigger perfume for dogs did not dilute or infringe the TOMMY HILFIGER mark used on apparel and perfume for humans, and that Chewy Vuiton purse-shaped dog toys did not infringe or dilute the famous LOUIS VUITTON mark for handbags, luggage and other items (for further details on the Vuitton Case please see "Louis Vuitton's infringement and dilution claims chewed up on appeal"). In the wake of Hilfiger and Vuitton, it seemed that any parodic pet toy could pass the 'sniff' test.
To prevail on the merits for trademark and trade dress infringement, Anheuser had to establish that:
- its trade dress was non-functional and distinctive; and
- imitation of its trade dress would likely confuse consumers as to the source of the goods.
Factors to consider in weighing the likelihood of consumer confusion included:
- the strength of the BUDWEISER mark and trade dress;
- the similarity between the marks;
- the degree to which the toys competed with Anheuser's products;
- VIP’s intent to confuse the public;
- the degree of care potential consumers would exercise in purchasing VIP's toys; and
- evidence of actual confusion.
The court focused its analysis on the likelihood of confusion, emphasizing the last two prongs: consumer care and actual confusion.
The Budweiser brand is known for beer. However, Anheuser also sells a number of pet products that bear the BUDWEISER mark and logo, including water bowls, leashes, collars and dog beds. While that product line accounts for a negligible portion of the company’s revenue and reputation, it played a large role in convincing the court to enjoin VIP, since Anheuser argued persuasively that the offending toys actually competed with existing Budweiser items. Noting that ButtWiper and Budweiser dog products sell for only around $10, the court deemed consumers unlikely to exercise a high degree of care in purchasing them.
The court distinguished Anheuser's infringement claim from those in Hilfiger and Vuitton, noting that the plaintiffs in those cases neither sold pet toys, nor presented convincing evidence of actual confusion. The existence of a reliable survey from which the court could conclude that confusion was likely to occur was the most significant difference between the present case and Hilfiger and Vuitton.
However, the court did not find the use of the term 'ButtWiper' with an image of a dog dragging its rear end across the floor unsavoury enough to constitute dilution by blurring or tarnishment, erroneously applying the pre-Trademark Dilution Revision Act 'actual harm' test. Relying on Moseley v V Secret Catalogue Inc (537 US 418 (2003)), the court found that Anheuser had failed to demonstrate that:
- consumers would change their impression of Budweiser products because of an association with the ButtWiper toys; or
- VIP's use of the BUTTWIPER mark had harmed the reputation of Anheuser's goods.
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