Patagonia vs. Pattie Gonia: Who has the stronger case? Trademark lawyers weigh in

A high-profile lawsuit between two well-known entities is never just tried in a courthouse; it’s also tried in the court of public opinion. And that’s exactly what’s happening with the Pattie Gonia vs. Patagonia copyright infringement case. The apparel company sued the drag queen in January after she applied for a trademark to sell merchandise and promote her activism and online marketing. This, the company alleges in a statement posted on its website, violated a previously held agreement between the two parties — though the drag queen claims there was no agreement.

Patagonia maintained it did not want to sue Pattie Gonia, but needed to do so to protect its trademark and itself from bad actors. Initially, when the lawsuit was filed, the drag queen remained silent. However, that silence was broken last week, when she uploaded a video to Instagram and a written statement, claiming that the brand is trying to “erase an activist.” At first, Pattie had the court of public opinion on her side, especially in this fraught political landscape where queer and nonbinary people’s rights are at risk, and drag queens are used as scapegoats.

The two parties have shared their stipulations for dropping the lawsuit on social media: Pattie says that she would drop her pursuit of a trademark if the brand agrees to drop the lawsuit. Meanwhile, the brand says it will drop the lawsuit if she drops all trademark applications, ceases using its logos, and stops selling and promoting apparel and other products under the name Pattie Gonia.

As the two parties reach a stalemate, Out spoke with three lawyers who specialize in trademark and intellectual property law about what is going on in this case, who has greater legal standing, and what the path forward is for both Pattie Gonia and Patagonia.

Alexandra J. Roberts is a professor of law and media at Northeastern University and a leading voice in intellectual property and social media, with expertise in trademark law. She largely sides with Pattie because she feels the brand has a much higher bar to clear, given the claims in the lawsuit.

According to Roberts, one of the major hurdles Patagonia has is establishing what’s called a “likelihood of consumer confusion." Simply put, the company needs to prove that when Pattie sells merchandise, there is confusion about where the products are coming from and whether there is credible affiliation, permission, or authorization. In this scenario, consumers would believe that the brand permitted another entity to use its logo, entered into a licensing agreement, or engaged in a legitimate collaboration.

The origin of the name itself is also a factor — Patagonia the brand is named after a region in South America. “Patagonia and Pattie Gonia are certainly not identical, and they're both references to a place, a geographic region,” Roberts tells Out. “So it’s not the case that this is a made-up term like the brands Xerox or Excedrin. Instead, it's an existing word, and it's a word that links to a particular geographic spot, which I think makes it more viable that consumers will expect there could be more than one user.”

Another obstacle for Patagonia is the federal trademark dilution claim, which sets a high bar for the company to prove that its mark is famous among the general public of the United States, Roberts explains — not just environmentalists or outdoorsy people, but everyone. “For Patagonia, while I do think even if they do qualify as famous, I think that's a difficult argument to win on, because the marks are not identical,” she says. “Pattie is a female name; there’s a space between [the first and last name]. I think those things undercut the dilution claim.”

Rebecca Tushnet, a law professor at Harvard Law School who practiced intellectual property law, agrees with Roberts's reading on the dilution claim — and that the public could reasonably expect there might be more than one brand that references the South American geographical region. But that argument is not a slam dunk, she shares.

For example, apple is a generic word, and it's also the name of a major technology company. "You could walk into a grocery store, and you're confronted with a lot of apples; it’s not infringing to offer an apple for sale,” Tushnet says. If you start selling technology products labeled as Apple, however, then that’s where you run into some trouble.

When it comes to the dilution claim, Tushnet is not convinced there is a strong argument there. She says the term is a “made-up idea that trademark owners got Congress to adopt” to argue that there is “some sort of injury for people to ask, ‘OK, well, which one do you mean?’” when it comes to two brands with similar or identical names. She continues, “Although it’s made up, people have strong intuitions about it, and it is in the federal law. Because it’s made up, nobody really knows what dilution is. It’s even hard to predict that infringement.”

There are, however, strong considerations of artistic freedom in allowing Pattie to continue, Tushnet argues, but the courts aren’t always in agreement.

As the case gains more traction online, much of the conversation in the comments section centers on the argument that Patagonia has the right to defend its trademark to deter bad actors — and that if it didn't take legal action against the drag performer, it would set a bad precedent. “Yeah, that’s dumb,” Tushnet says plainly. Roberts agrees: “The myth of the duty to police is overblown — this idea that you have to go after every use of your mark or every use of something similar to maintain your rights, that’s just not really true.”

Some lawyers who side with Patagonia argue that the brand's protection of its name helps small business owners in the long run. Carmel Imani, the founder and managing attorney at Imani Law, a firm that largely works with entrepreneurs and small business owners, believes that the brand should defend its trademark. "If they [didn't] file this lawsuit, their trademark weakens," Imani says. "Let's say they allow Pattie Gonia to move forward in the clothing category, you're going to have other brands come in that [sound] similar to it."

What Imani loves most about trademark law is that it protects small artists, creators, and business owners in the long run. And when it comes to the claim of "likelihood of confusion," she remarks that whenever an entity makes an argument in trademark law, they must also attach evidence, which is what Patagonia did in its complaint. The company included screenshots of consumers being confused in its lawsuit, a blow to Pattie Gonia's side because, as Imani underlines, marketplace confusion is the best evidence.

The question then becomes: Are other drag queens who parody well-known brands like Trixie Mattel, Brita Filter, or Jan Sport at risk for a copyright infringement lawsuit? The lawyers agree that it depends on whether or not they decide to use another company's trademark — as long as they don't, they should be in the clear.

Though if there's any advice that Tushnet could offer to Pattie and others, it's this: "If you're a parodist, don't apply for a trademark registration. The Patent and Trademark Office has no sense of humor."