BAD DOG! ER…SPANIEL.

Who let the bad dog out? Apparently, the 9th Circuit did.  

For the last 12 years, Jack Daniel's VIP Products have been at war over VIP's "Bad Spaniels" dog toy. The dog toy includes such whiskey-related phrases as "Old No. 2", "43% POO BY VOL" and "100% SMELLY", and has a similar look to the famous Jack Daniel's whiskey bottle. Jack Daniel's claims that the dog toy dilutes its brand because of its fecal references. VIP claims the dog toy is a parody and would not tarnish Jack Daniel's brand. This war has seen multiple battles in the appellate courts, including the United States Supreme Court. Until now, VIP has been prohibited by court order from selling its dog toy. However, that war may be at an end.

In the latest chapter of the long-running trademark dispute, the Ninth Circuit recently held that dog toy did not dilute Jack Daniel’s trademarks under the Trademark Dilution Revision Act (“TDRA”). The Court began by defining what a trademark owner must prove for dilution by tarnishment. Under the "TDRA", a plaintiff must establish that (1) its senior mark is famous, (2) the allegedly diluting junior mark is similar to the famous mark, and (3) the junior mark creates a mental association with the famous mark that is likely to damage the famous mark’s reputation. Importantly, the court rejected an approach that simply considers the defendant’s product as a whole and asks whether it creates an unpleasant association with the plaintiff’s brand. Instead, the TDRA requires a more precise mark-to-mark analysis: only a junior mark similar to a corresponding famous mark may supply the basis for tarnishment, and the trademark owner bears the burden of proving fame, similarity, and likely reputational harm.

After concluding that Jack Daniel's had not proven each characteristic of its branding was independently famous, the Court also held that the dog toy was not likely to harm Jack Daniel's marks. An obvious poop-themed dog toy parody would not lead consumers to think less of Jack Daniel's whiskey, and to think otherwise would be "pure conjecture."

The Court also emphasized the importance of the parody aspect of the dog toy. Since Bad Spaniels was being used as a trademark, VIP could not invoke the TDRA's statutory exclusion for parody/noncommercial use. However, courts shouldn't ignore a parody mark when deciding on tarnishment. Consumers recognize the parody and may interpret the offensive or ridiculous association as a joke rather than attribute the association to the trademark owner. Jack Daniel's therefore failed to show the likelihood of reputational harm.

As a result, the Court ruled in VIP's favor and dissolved the permanent injunction keeping VIP from selling Bad Spaniel.

Will this be the end? Or will Bad Spaniel make a second trip to the Supreme Court?

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