The Handmaid’s Fail: Can Trademark Dilution Exist in Lingerie?

One of my favorite things on premium television is streaming network Hulu’s adaptation of Margaret Atwood’s bestselling dystopian novel “The Handmaid’s Tale”. After a highly acclaimed (13 Emmy nominations, 8 wins) debut season, the online series had its much-anticipated Season 2 premier last week.

For those who have not yet seen the show or read the novel, THT tells the story of Offred (played by the always fantastic Elizabeth Moss), a “handmaid” living in a future totalitarian, theocratic state that has replaced the good ‘ol USA.  For reasons neither the show nor novel get into, the wives of Gilead’s ruling elite (all men, naturally) have been rendered barren and, as a result, fertile women like Offred (who is married with a young daughter of her own) are kidnapped and forced into sexual slavery by the regime, assigned to Gilead’s power couples to bear children for them.  When not doing that, Handmaids like Offred are required to cover themselves in full length, blood-red robes signifying not only their role in society but also marking them as someone’s property.

So it was with more than a little facepalm that I learned that someone is making a lingerie line based at least in part on the popularity of the hit series, offering a red colored camisole named after, wait for it, Offred.  While some might argue that naming a piece of romantic sleepwear after a victim of institutionalized rape is slightly tone-deaf and of questionable taste, it does give me a great excuse to discuss the concept of trademark dilution.

Regular readers of this blog probably know that trademark law is generally concerned with protecting consumers against confusingly similar (or even counterfeit) goods or services. Trademarks protect consumers by helping the public identify the source or origin of the goods or service.

However, not all trademark law is aimed at protecting consumers. The Federal Trademark Dilution Act (FTDA) (and, later, Trademark Dilution Revision Act) is aimed at protecting an owner’s property rights in their trademark.

A claim for trademark dilution essentially prohibits using a famous trademark in a way that waters down (in other words, dilutes) the uniqueness of the famous mark, either through “blurring” or “tarnishment” of the mark. Blurring occurs when a defendant uses or modifies a plaintiff’s trademark to identify the defendant’s own goods and services, thereby affecting the ability of the original mark to act as a unique identifier of the plaintiff’s product or service. Tarnishment, on the other hand, occurs when a famous trademark is used in an unsavory or unflattering manner, damaging or threatening to damage the mark’s reputation among consumers.

Unlike a basic trademark infringement claim, to succeed on a claim under the FTDA, the trademark owner must be able to show that their mark is “famous” which, according to the law involves evaluating eight specific factors:

  1. The degree of inherent or acquired distinctiveness of the trademark
  2. Duration and extent of the use of the mark in connection with the goods and services at issue
  3. Duration and extent of advertising and publicity of the mark
  4. Geographical extent of the trading area in which the mark is used
  5. Channels of trade for the goods or services for which the mark is used
  6. Degree of recognition of the mark in the trading areas and channels of trade used by the mark’s owner and the person against whom the injunction is sought
  7. Nature and extent of use of the same or similar marks by third parties; and
  8. When and how the mark was registered.

Assessing these eight factors, it is possible that Hulu (and possibly Atwood herself) would be able to bring a claim for trademark dilution (and, assuming the mark “Offred” has actually been registered with the USPTO) possibly infringement against Lunya, the makers of the “Offred” lingerie.  For starters, to my knowledge, apart from the Atwood novel and the television series it is based upon, the word “Offred” doesn’t mean anything and is inherently distinctive. The novel introducing us to the name was published in more than 30 years ago in 1985, and has sold millions of copies worldwide (not to mention being the most read book of 2017 on Amazon.com).  Furthermore, the trademark has been used as part of the novel globally both in print as well as through streaming and network broadcasts of the TV adaptation in (so far) Canada, the United Kingdom, Scandinavia, Australia and New Zealand.  Moreover, the marks are identical, a spokesperson for Lunya having admitted that the company’s employees are fans of the show and had, in fact, named the item and its color in honor of the fictional character.

Weighing the other side, it is debatable whether “Offred” in fact has enough name recognition to be considered famous for purposes of the FTDA. While the character’s (or, rather, Moss’) image appears prominently in Hulu’s marketing for the show, the name “Offred” itself does not.  Furthermore, there is a question whether the Offred fictional character in the novel and TV series and Lunya’s sleepwear actually occupy the same channel of trade. Lastly, the name Offred does not appear to be registered with the USPTO, a factor which is not fatal to a claim under the FTDA but is also not helpful towards arguing the famousness of the mark.

The traditional remedy in dilution cases is an injunction against the trademark violator, which is probably what either Hulu or Atwood would seek (if they chose to). In addition, monetary damages may be rewarded if the defendant is found to have willfully intended to trade on the trademark owner’s reputation or to cause dilution of the famous mark, both of which might reasonably be argued here (though, to be clear, I am NOT saying that this is the case!).

Then again, perhaps Hulu and Atwood aren’t as aghast by the use of the “Offred” mark on an article of lingerie as some of us fans are.  They might even be flattered by the tribute or decide that any additional publicity (however disconcerting to many of us) is good publicity.  We will have to see how they and Lunya decide to play it out.  In the meantime, for those businesses and individuals whose trademark can be shown to be famous, the FTDA and FTDRA offer significant legal remedies against unauthorized use of their famous mark that would, if allowed to carry on, cause the famous mark to be watered down and lose its recognition or reputation with the consumer.

Ben Bhandhusavee is the Managing Attorney for BhandLaw, PLLC, a Phoenix business and technology law firm focused on creative intellectual property, Internet and digital media matters, and complex corporate M&A and technology transactions.  Ben can be reached at (602) 222-5542 or by e-mail at bbhand@bhandlaw.com