A Maryland cannabis-themed apparel company has stopped selling a parody sticker resembling Old Bay packaging after McCormick & Company sent a cease-and-desist letter telling the company to stop using the image.
Crabcakes & Cannabis previously sold a sticker that says “420 BUD” in lettering, font and coloring resembling Old Bay seasoning’s trade dress. The apparel company received the letter from McCormick in late September demanding the cessation of use of the image.
Jennifer Culpepper, founder of Crabcakes & Cannabis, said that no reasonable consumer would confuse the company’s sticker with a food seasoning product.
“I think people are smart enough to understand parody,” Culpepper said. “I think most people are smart enough to recognize that and that they understand that it is a parody of Old Bay because we are talking about different kinds of herbs.”
Culpepper said her company intended to pay homage to the Old Bay brand, but instead felt bullied as a small business because her company does not have the financial means to fight a legal battle.
Culpepper also noted that parodies are a way for artists to make statements, and said that to not be allowed to use parodies of company’s brands “would really make a blanket censorship of that sort of free speech.”
A spokesperson for McCormick said, “McCormick is committed to protecting the identity of its iconic brands, including OLD BAY. It is sometimes necessary to take action to prevent any misuse of our intellectual property. We requested on several occasions that the business cease selling this non-licensed and unapproved product.”
McCormick further said the company “must ensure that the use of our brand continues to promote and protect the goodwill we have built over the past 75+ years and is authorized by McCormick.”
James Astrachan, a partner at Goodell DeVries who represents clients in intellectual property and litigation, said this situation, if it were to go to court, would involve the traditional test of trademark infringement based on whether a likelihood of confusion exists.
To succeed on a trademark infringement claim under the Lanham Act, a plaintiff must demonstrate that it has a valid and legally protectable mark, that it owns the mark and that the defendant’s use of the mark causes a likelihood of confusion.
To determine whether a likelihood of confusion exists, each circuit court develops and set out its own factors guided from federal trademark law. The U.S. Court of Appeals for the 4th Circuit employs nine likelihood of confusion factors, including the strength of distinctiveness of the plaintiff’s mark, the similarity of the goods or services that the marks identify and whether there is actual confusion, to name a few.
“There’s no talisman that you can weigh when you say, ‘this happens to be a parody, it’s funny,’” Astrachan said.
“Where the message is parodic, that may figure in assessing whether or not there is a likelihood of confusion, because individuals are the ones that have to judge whether this particular product, they believe, came from McCormick’s or whether there was some association or a license or permission,” Astrachan said. “The fact that it’s a parody may give an appreciable number of consumers pause who may think, ‘no, we know this doesn’t come from McCormick.’ If that’s the case, there’s no prohibition because trademark law is about a likelihood of confusion.”
Other courts have ruled on similar cases regarding likelihood of confusion.
In 2007, the 4th Circuit held in Louis Vuitton Malletier v. Haute Diggity Dog, LLC that a pet products company’s dog chew toys labeled “Chewy Vuiton” were not likely to cause confusion with Louis Vuitton’s products. Ultimately, the court considered the “Chewy Vuiton” marks a successful parody.
However, courts have also found evidence of confusion in other cases. In Anheuser-Busch, Inc. v. VIP Products, LLC, the court found Anheuser-Busch presented survey evidence showing consumers could not tell whether a company’s dog squeeze toy called “Buttwiper” was associated with Budweiser. The court subsequently granted Anheuser-Busch a preliminary injunction.
Most recently, in June, the U.S. Supreme Court in Jack Daniel’s Properties, Inc. v. VIP Products LLC limited when a test for trademark infringement claims challenging expressive works applies and found that the Lanham Act’s exclusion from liability for noncommercial use of a mark does not shield parody, criticism or commentary from a claim of trademark dilution.
Astrachan emphasized the “immense value” of trademarks for companies. He said the burden is on McCormick to show a likelihood of confusion, and that if McCormick can prove survey evidence of confusion, they’d likely enjoin Crabcakes & Cannabis.
(Editor’s note: This story was updated Oct. 12 to include McCormick and Company’s comments.)