Trademark Law
9th Circuit narrows Jack Daniel’s trademark challenge win
A federal appeals court on Tuesday set aside a permanent injunction against the maker of a dog toy parodying a whiskey bottle, concluding that Jack Daniel’s trademark challenge did not establish that VIP Products’ “Bad Spaniels” caused reputational harm to the distiller.
VIP Products designs the “Bad Spaniels: The Old No. 2 on Your Tennessee Carpet” chew toy, which mimics the look of a well-known whiskey bottle and riffs on the Jack Daniel’s “Old No. 7 Brand” mark.
Bennett Cooper, counsel for VIP Products, argued that the toy could not tarnish the whiskey brand because “Bad Spaniels” is not similar enough to create the kind of association the Lanham Act of 1946 requires for liability, according to court coverage.
Matthew Nicholson, representing Jack Daniel’s, told a three-judge panel of the 9th U.S. Circuit Court of Appeals in San Francisco that the product’s labeling, including “43% poo by volume. 100% smelly,” creates an association that harms the brand. “They’re evoking the image of a bottle of liquid feces, your honor,” he said.
The dispute began in 2014 when VIP Products sued after Jack Daniel’s demanded it stop selling the Bad Spaniels toy. A federal district court found infringement and dilution in 2017. The 9th Circuit later reversed or vacated key portions of that decision.
In 2023, the U.S. Supreme Court took up the case and remanded it for further proceedings, sending it back through the lower courts before returning to the appeals court.
See also:
Supreme Court will hear Jack Daniel’s appeal over parody dog toy ‘Bad Spaniels’