It can be a challenge to obtain a trademark, especially if your mark is a spoof of an award-winning TV series. This case is a reminder that it’s best practice to ensure that your mark is not likely to cause confusion or blur the original famous mark.
Background
Since Breaking Bad debuted there have been a number of products that imitate the show and its unique name. Sony Pictures Television Inc. owns the trademark rights for the BREAKING BAD franchise which has received widespread critical acclaim and won several Emmy Awards.
Breaking Bad first debuted in 2008 by introducing Walter White as a chemistry teacher who is diagnosed with Stage III cancer. With a desire to secure his family’s financial security he chooses to cook methamphetamine (“meth”) as a way to pay for his treatment and provide financial security for his family.
Along the way, he partnered with Jesse Pinkman and often gained assistance from con artist and lawyer, Saul Goodman. After Walt met his demise when Breaking Bad ended in 2013, the franchise expanded with the spinoff prequel series based on Saul’s life. In addition, El Camino: A Breaking Bad Movie, was released in 2019 which serves as a sequel and epilogue to the television series Breaking Bad.
With two series and a movie under its belt, it’s no surprise that Sony wants to protect its rights to the trademark BREAKING BAD.
The Dispute:
In March 2021 an application for BAKING BAD was filed by an attorney, Thomas Mihill, with the intention to use the mark for a continuing cooking show broadcast over television, satellite, audio, and video media. The client’s name has not been disclosed.
During the mark’s review process, Sony discovered that this trademark application had been submitted and filed an opposition on December 7, 2021.
In the notice of opposition, Sony claims that a likelihood of confusion exists. For this to be true, the marks and the goods and/or services for which they are used must be so related that consumers would mistakenly believe they come from the same source.
While BREAKING BAD and BAKING BAD are both TV shows, would consumers really mistake a cooking show for one of the most popular series ever?
Within their opposition, however, Sony points out that they have used BREAKING BAD within the food and beverage category. These ventures include Heisenberg Blue Ice Vodka, Schraderbrau beer, and Los Pollos Hermanos pop-up restaurants.
With that said, it’s easy to see how the mark, BAKING BAD, may lead consumers to mistakenly think that Sony is the source of the cooking show.
Interestingly, a separate trademark application was filed by Amy Tharpe in July 2021 for use of the mark, BAKING BAD, for a catering business and bakery. This mark has not yet been approved or opposed.
WHAT HAPPENS NOW?
The applicant for BAKING BAD has until March 12, 2022, to respond to Sony’s opposition. Failure to do so will result in the Trademark Trial and Appeal Board (TTAB) finding in Sony’s favor.
If Mihill does decide to move forward with the trademark application a proceeding will be held before the TTAB and the case may not conclude until 2023.
Takeaway
A parody must be obvious enough that consumers will not assume the original trademark owner is connected with or approved the parody but will realize that it is a “take-off” on the original. If not, a likelihood of confusion might be demonstrated, in which case the defense of parody is defeated.
Secondly, a parody must be clever enough to avoid the dilution of famous marks. For example, when Ilan Moskowitz filed an application to register the mark MILLENNIAL FALCON as a parody of the famous mark, MILLENNIUM FALCON, the USPTO Board affirmed that the public would believe that Moskowitz’s musical performances and recordings are sponsored and associated with LucasFilm. Therefore, the USPTO refused the registration of the trademark to Moskowitz.
With the case of BAKING BAD, we’ll have to wait and see how the Baking Bad creators respond.
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