## Facts

- Tommy Hilfiger Licensing, Inc. owned the TOMMY HILFIGER word mark and a red-white-blue “flag” design mark used on apparel and fragrances.
- Nature Labs, LLC sold novelty “pet perfumes” that spoofed designer fragrances through pun names and parody trade dress.
- Nature Labs initially sold a pet perfume called “Tommy Holedigger” with a label resembling Hilfiger’s flag design.
- After Hilfiger objected, Nature Labs changed the product name to “Timmy Holedigger” and replaced the label with a different design (yellow/red triangles with blue border and white lettering).
- The packaging included the phrase: “If You Like Tommy Hilfiger Your Pet Will Love Timmy Holedigger,” and also included a disclaimer stating no affiliation with Hilfiger.
- The pet perfumes sold for about $10 and were marketed through pet stores and gift shops, not through the primary channels for Hilfiger’s human fragrances.
- Hilfiger sued asserting Lanham Act infringement/false designation, dilution (federal and state), false advertising, and related New York claims; Nature Labs moved for summary judgment.

## Issues

1. Whether “Timmy Holedigger” and its revised packaging created a likelihood of confusion as to source, sponsorship, or affiliation under the Lanham Act.
2. Whether the parody name and trade dress diluted Hilfiger’s famous marks by blurring or tarnishment.
3. Whether the statement “If You Like Tommy Hilfiger Your Pet Will Love Timmy Holedigger” constituted actionable false advertising under § 43(a).
4. Whether parallel New York statutory and common-law claims survived absent federal liability.

## Decision

- The court granted Nature Labs’ motion for summary judgment on all claims.
- No reasonable jury could find a likelihood of confusion because the product presentation was an obvious parody, the revised label differed materially, and the goods and channels were remote.
- Hilfiger failed to establish dilution by blurring or tarnishment from a humorous, non-competing use on novelty pet perfume.
- The comparative slogan was not shown to be literally false or misleading and was non-actionable as a non-verifiable promotional statement.
- The state-law claims failed for the same reasons as the federal claims.

## Legal Principles

- Likelihood of confusion under the Lanham Act is evaluated using the Polaroid factors; in a parody case, the parody’s success commonly depends on consumers recognizing the target and not believing the goods come from the mark owner.
- Strong and famous marks can reduce confusion in a parody setting because recognition of the target supports the joke rather than suggesting source.
- Absence of meaningful evidence of actual confusion, combined with distinct trade dress changes, a disclaimer, non-competing products, and separate channels of trade, supports summary judgment against infringement and false designation claims.
- Dilution by blurring requires impairment of a famous mark’s distinctiveness; a parody that depends on the mark’s continuing distinctiveness and is used on a non-competing novelty product may not satisfy that standard.
- Dilution by tarnishment generally requires an unwholesome or degrading association; a whimsical association with pet products, without more, is insufficient.
- Lanham Act false advertising requires a materially false or misleading statement of fact; non-verifiable comparative slogans are typically treated as puffery absent proof of deception.

## Conclusion

The court held that Nature Labs’ “Timmy Holedigger” pet perfume was a recognizable parody that did not likely confuse consumers, did not dilute Hilfiger’s famous marks by blurring or tarnishment, and did not constitute false advertising, warranting summary judgment for Nature Labs on all federal and state claims.


Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410 (S.D.N.Y. 2002)