Patagonia is in hot water over its legal action against a drag queen, but as lawyers suggest, businesses face a double-edged sword when it comes to protecting their trademarks.

A drag queen artist and environmentalist, Wyn Wiley, was sued by the US outdoor retailer Patagonia, which alleged the performer violated its trademark by going professionally by the name ‘Pattie Gonia’ for $1 (plus legal fees).

The artist denied having used the Patagonia logo in merchandise, saying the lawsuit “cherry-picks a few examples of playful parody and fan art,” also noting drag is “built on parody, puns and jokes.”

The lawsuit, which was filed in the District Court in California in January, sparked a divided response online after the artist informed fans in an Instagram post, “I’m fighting, and I’m inviting you to join me in a simple call to action: Patagonia, drop the lawsuit.”

The fallout online resulted in the company issuing an update statement last week, stating it “has a responsibility to protect the company that generations of employees have helped build.”

“This matter is not about seeking financial gain, nor is it about challenging anyone’s identity or right to advocacy, protest, or creative expression. The last thing we wanted was a legal fight with someone who shares our values, but we must protect our business and employees,” the company added.

The US retailer, known for its weather-resistant clothing, stated that it had tried to “find a path forward” that would allow Pattie Gonia to continue their work while also protecting the Patagonia trademark, but the parties could not reach an agreement.

Balancing brands and backlash

City trademark lawyer stated that “businesses caught in trademark disputes with smaller, ethically driven opponents, the path forward is rarely straightforward.”

Louise Popple, senior counsel at Winston Taylor, told City AM: “Legal considerations must be carefully balanced against the very real risks of a PR disaster – and getting that balance wrong can prove costly.”

“Reading between the lines, the outdoor clothing giant seems content for Pattie Gonia to use her name in a personal capacity but draws the line at its use in connection with clothing and related commercial activities,” Popple said.

“Given the decades and considerable resources Patagonia has spent building its distinctive brand identity, that concern is entirely understandable from a legal standpoint.”

“Whether it is a wise move from a reputational perspective, however, is a far harder question to answer,” she added.

Dewdney William Drew, head of brand protection at Charles Russell Speechlys, added, “Trademark disputes of this kind require some finesse.”

But for this case, he noted, “whatever was going on before the US trade mark application to register PATTIE GONIA was filed seems to have been manageable, so why the lawsuit? Well, the US Patent and Trademark Office examines trade mark applications and will block them if they are considered too similar to an earlier registration.”

“Notably, the office action that issued (this February) did not cite PATAGONIA as an earlier trade mark, implicitly expressing the view that PATTIE GONIA is not similar.”

“While Patagonia might have been hoping for the US Patent and Trademark Office to refuse [the Pattie Gonia] application and save them a job, the decision to then sue may be one that they regret,” Drew added.