February 7, 2022
Michael J. Pistorio

Johnson & Johnson v. Pissterine, LLC, Opposition No. 91254670, January 18, 2022

The U.S. Trademark Trial and Appeal Board sustained Johnson & Johnson’s opposition to registration of “PISSTERINE”, based on the likelihood of confusion with the “LISTERINE” registered trademark.

Pissterine LLC, markets, according to its Instagram page, PISSTERINE, a “urine-flavored mouthwash novelty item for the whole family.” The company applied for a trademark in the goods categories “Mouthwashes, not for medical purposes; Non-medicated mouthwash and gargle; [and] Non-medicated mouthwashes, in International Class 3.” Johnson & Johnson opposed the mark based on a number of active trademarks for their well-known mouthwash product, “LISTERINE”.

The court first laid out that the LISTERINE was an arbitrary mark and that the product had strong commercial strength/fame that “strongly support a finding that confusion is likely,” since famous marks receive a “broader scope of protection than other marks.”

In a very standard analysis under DuPont factors of likelihood of confusion, the court determined that the marks were substantially similar, and that trade channels and consumers were overlapping. The court also found the sophistication of the customers to be “ordinary.” As such, the opposition was sustained and registration of the mark was refused.

The court did not find that the PISSTERINE mark was filed in bad faith, since it found that the intent was to create a parody.

We note that while the court acknowledged the mark’s intent as parody as a factor in the bad faith argument, it addressed the likelihood-of-confusion argument in a straightforward manner without acknowledging that an ordinary customer may be likely to perceive PISSTERINE as a parody. This is perhaps because the applicant did not present any evidence regarding the consumer perception of the PISSTERINE mark, which could have rebutted the court’s straightforward likelihood-of-confusion analysis. We also note that this decision does not necessarily preclude Pissterine, LLC from using the mark as a parody, but prevents the mark from being registered as described.