On remand from the Supreme Court, the trial court ruled that the BAD SPANIELS dog toy, spoofing the famous JACK DANIEL’S brand and whiskey bottle, constituted trademark dilution but not trademark infringement.

The Jack Daniel’s trademark litigation, which has been ongoing since 2014, revolves around VIP Products’ sales of a squeaky, rubber, poop-themed, BAD SPANIEL dog toy that imitates the famous JACK DANIEL’S brand and whiskey bottle. Jack Daniel’s claims VIP’s dog toy constitutes trademark infringement and trademark dilution by tarnishment.  VIP claims its dog toy is a defensible humorous parody and that confusion as to source is neither intended nor likely, and it denies Jack Daniel’s claims of trademark infringement and trademark dilution.  VIP also tried to add a new constitutional challenge to the Trademark Dilution Act at an advanced stage of the litigation, but it was not considered by the court because it had not been raised in the pleadings.

Under U.S. law, trademark infringement and trademark dilution are significantly different claims.  Trademark infringement aims at preventing confusion of the public as to the source of products and services.  Trademark dilution aims at protecting the uniqueness and reputation of famous trademarks, regardless of confusion or its absence.  Dilution by tarnishment occurs when the famous mark’s reputation is harmed through association with a similar mark.

This case previously went up to the Supreme Court on the issue of whether VIP’s use of the BAD SPANIELS mark and trade dress was expressive in nature, and thus protected expression under the First Amendment under the Rogers v. Grimaldi case. https://law.resource.org/pub/us/case/reporter/F2/875/875.F2d.994.88-7828.88-7826.600.601.html,  VIP contended that precluded the court from reaching the trademark infringement and dilution issues.  However, the Supreme Court unanimously rejected that argument, holding that the heightened First Amendment protections under Rogers did not apply because VIP was using versions of the JACK DANIEL’S trademarks and trade dress as its own trademarks and trade dress.  https://www.supremecourt.gov/opinions/22pdf/22-148_3e04.pdf  The Court acknowledged that “a trademark’s expressive message—particularly a parodic one, as VIP asserts—may properly figure in assessing the likelihood of confusion,” but it remanded the case to the trial court to consider the standard trademark infringement and trademark dilution factors.

The trial court did that and decided the case on January 23, 2025.  https://casetext.com/case/vip-prods-v-jack-daniels-props It found VIP guilty of trademark and trade dress dilution by tarnishment and enjoined further sales, but not guilty of trademark or trade dress infringement. These different outcomes illustrate the special treatment of parody in trademark law.

Trademark Dilution by Tarnishment

A trademark dilution by tarnishment claim requires proof that: (1) The plaintiff’s mark or trade dress is “famous,” (2) the defendant’s mark or trade dress is similar, and (3) the defendant’s mark or trade dress is likely to cause reputational harm to the plaintiff’s brand.

• Fame –The trial court found the Jack Daniel’s mark and trade dress to be famous, as a result of billions of dollars of sales, hundreds of millions of dollars in advertising, and extensive public recognition over the years.

• Similarity – The trial court also found VIP’s dog toy to be similar, as it intentionally mimicked Jack Daniel’s trademarks and bottle in many respects: the square bottle shape, ribbed neck, arched white lettering on a black label, were all very similar. The spoof wording was also similar:  JACK DANIEL’S became BAD SPANIELS; OLD NO. 7 became OLD NO. 2; and TENNESSEE WHISKEY became TENNESSEE CARPET.

• Reputational Harm – This was heavily contested, and the parties both relied on expert testimony, a Battle of the Experts.

Jack Daniel’s expert applied a consumer psychology approach to Jack Daniel’s commercials and advertising.  He found that strong positive mental associations with the JACK DANIEL’S brand existed before the VIP product was introduced. He also testified that the scatological associations in VIP’s branding likely had a negative impact on the Jack Daniel’s brand.  Jack Daniel’s “Old No 7 Tennessee Sour Mash Whiskey” became “The Old No. 2 on your Tennessee Carpet.” 40% alcohol by vol. (80 proof)” became “43% poo by vol.” And “100% smelly” all were unsavory associations that denigrate and undermine Jack Daniel’s positive associations

VIP’s expert relied on focus groups testing consumer reactions to the BAD SPANIEL product, but the court found they were flawed because the participants were told up front that the VIP dog toy was a spoof, which produced predetermined results.

Jack Daniel’s decisively won the Battle of the Experts.  The court found the Bad Spaniel dog toy created negative associations, and undermined positive associations, with the famous Jack Daniel’s brand.  Jack Daniel’s prevailed on its dilution by tarnishment claim and the court entered an injunction on this ground.

Trademark Infringement

The court also considered trademark infringement, but the analysis went very differently.  First, it noted that the Supreme Court said the accused product must be a “successful parody” in order to avoid confusion.  Citing the “Chewy Vuiton” case, https://casetext.com/case/vuitton-malletier-v-haute-diggity, the court said this depends on: (1) whether the spoof product evokes the original being parodied, and (2) whether it creates contrasts through humor, sufficient to dispel any confusion as to the source of the parody.  The court concluded VIP’s product was a successful parody, as it evoked the original Jack Daniel’s bottle and branding, and created contrast through humor.  Significantly, the court also held that humor was enough, rejecting the argument that commentary was necessary for a successful parody.

The court then applied the standard infringement factors, some of which favored Jack Daniel’s:

• Strength of Plaintiff’s Mark – Very strong trademarks and trade dress.
• Proximity of the Products – Slightly favored Jack Daniel’s, the main products, whiskey and dog toys, were very different, but Jack Daniel’s licensed dog leashes, collars, and dog houses.
• Marketing Channels – Same purchasers, same stores.
• Degree of Consumer Care – Low prices, less customer care, confusion more likely.
• Product Line Expansion – Slightly favored Jack Daniel’s.

But other factors that might have normally favored the plaintiff, had an opposite effect, or were neutral, because the court found the BAD SPANIELS product to be a successful parody:

• Similarity of the Marks – Close similarity normally favors infringement, but here, it favored VIP, as similarity was a necessary prerequisite for a successful parody.
• Actual Confusion – Jack Daniel’s “Eveready” survey showed 29% confusion, almost double the widely accepted threshold for probity. However, the court discounted it because it “may not have accounted for the fact that BAD SPANIELS is a parody product.”
• Intent – Evidence of deliberate copying normally favors infringement, but the court held this factor was neutral, because copying was necessary for a successful parody.

The court concluded confusion was unlikely between the JACK DANIEL’S and BAD SPANIELS products, as the public would likely see VIP’s dog toy as a spoof from a different source. It held that Jack Daniel’s infringement claim failed, even though its dilution by tarnishment claim succeeded.  The court explained the  different outcomes by the different policy goals and required elements of proof of trademark infringement and dilution claims, essentially confusion versus reputational harm.