• Services
  • Attorneys
  • Media & Insights
  • Online Payment
  • Join Our Team
Results may vary depending on your particular facts and legal circumstances. No aspect of this advertisement has been approved by the Supreme Court of New Jersey. A description of the selection methodology can be found here.
  • Services
  • Attorneys
  • Media & Insights
  • About Us
  • Delivering Value
  • Diversity & Inclusion
  • Meritas
  • Contact Us
  • Online Payment
    A
    Alternative Dispute ResolutionAntitrust & Trade RegulationAppellate Practice
    B
    Banking & Financial ServicesBankruptcy, Creditors’ Rights, and Financial RestructuringBeer LawBusiness Law
    C
    Cannabis LawConstruction LawCooperative and Condominium Law (Co-op & Condo)Criminal Defense
    E
    Economic Development LawElder Care & Special Needs LawElectronic Discovery ("E-Discovery")Environmental LawERISA & Employee BenefitsEstate Planning and Administration & Wealth PreservationExecutive Compensation and Employment Strategies
    F
    Food, Beverage & HospitalityFranchise Law
    H
    Health Care & Life SciencesHealth Care ProvidersHigher EducationHospitals and Health Networks
    I
    ImmigrationInsurance CoverageIntellectual PropertyIntellectual Property Litigation, Arbitration, and Dispute ResolutionIntellectual Property Portfolio Strategy, Management & LicensingInternational BusinessInternet Law
    L
    Labor & EmploymentLiquor Law, Licensing, Manufacturing, and DistributionLitigation
    M
    Media Law & Creative Economy PracticeMergers & AcquisitionsMunicipal Law
    N
    Non-Profit Law
    P
    Patent Preparation and ProsecutionPharmaceutical / Medical Devices / Pharma ServicesProducts and Consumer Liability DefenseProfessional LiabilityPublic Utilities
    R
    Real Estate, Finance, and Land Use
    S
    SecuritiesSolar Energy
    T
    TaxationTelecommunicationsTrademark & Copyright Protection & Enforcement
    V
    Venture Tech & Emerging Growth Companies
    W
    White Collar Investigations & DefenseWorkers’ Compensation
    • New Jersey
    • New York
    • Pennsylvania
    • Blogs
    • Articles
    • Podcasts
    • COVID-19 Resources

    Categories

    Copyright Copyright Infringement Copyright Licensing Copyright Office Copyright|Copyright Infringement|Intellectual Property Copyright|Copyright Infringement|Intellectual Property|Social Media Copyright|Copyright Infringement|Social Media Copyright|Intellectual Property Copyright|Intellectual Property|Social Media|Trademarks Court Decisions Double Patenting>Same Invention Double Patenting>Terminal Disclaimers Drafting Patents Drafting Patents>Claims Drafting Patents>Claims>Written Description False Advertising Federal Circuit Food & Beverage Food & Beverage|Intellectual Property Food & Beverage|Labeling|Legislation Food & Beverage|Trade Dress Food & Beverage|Trademark Infringement|Trademark Office|Trademark Registration|Trademarks Food & Beverage|Trademark Infringement|Trademarks|Unfair Competition Food & Beverage|Trademark Office|Trademark Registration|Trademarks|TTAB Food & Beverage|Trademark Office|Trademark Registration|TTAB Food & Beverage|Trademark Office|Trademarks Food & Beverage|Trademark Office|Trademarks|TTAB Food & Beverage|Trademark Registration|Trademarks Food & Beverage|Trademarks General In The News Intellectual Property Labeling Lanham Act Legislation Licensing Navigating the Patent Office Navigating the Patent Office>Examiner Interviews Obviousness/Inventive Step>Prima Facie Obviousness Patent Patent Eligibility Privacy Right of Publicity Social Media Supreme Court Trade Dress Trademark Infringement Trademark Infringement|Trademark Office|Trademark Registration|Trademarks Trademark Infringement|Trademark Registration|Trademarks Trademark Infringement|Trademarks Trademark Office Trademark Office|Trademark Registration|Trademarks Trademark Office|Trademark Registration|Trademarks|TTAB Trademark Office|Trademarks Trademark Registration Trademark Registration|Trademarks Trademark Registration|Trademarks|TTAB Trademark Registration|TTAB Trademarks TTAB Uncategorized Unfair Competition
    Blogs > More Than Your Mark® > The Supreme Court Weighs in...
    Associate
    Benjamin D. Schwartz
    Visit Profile

    The Supreme Court Weighs in on Jack Daniel’s v. Bad Spaniels

    The Supreme Court Weighs in on Jack Daniel’s v. Bad Spaniels

    Last week, in a unanimous opinion, the Supreme Court reversed and vacated the lower court's rulings in favor of Bad Spaniels. While this latest decision is a “win” for Jack Daniel’s, the allegedly infringing Bad Spaniels dog toy remains on the market pending remand of the case for further proceedings.

    Jack Daniel’s filed an action against dog toy company VIP Products, LLC, for a chew toy designed to mimic the Jack Daniel’s whiskey bottle bearing the label Bad Spaniels and other notations. A comparison of the two products at issue and an overview of the trademark infringement and dilution claims Jack Daniel’s brought against Bad Spaniels can be found in my colleague Jeanne Hamburg’s previous article on the case here. As a reminder, the two products are displayed below:

    Comparison between bottles - Bad Spaniels and Jack Daniels

    From Supreme Court of the United States

    Broadly, the Supreme Court did not agree with the legal standards and tests used by the lower courts to analyze Jack Daniel’s claims for trademark infringement and dilution by tarnishment. While Justice Kagan characterized the opinion as “narrow,” the Supreme Court’s adjudication of these issues sheds light on how federal courts should analyze trademark infringement and dilution claims that touch on First Amendment considerations like parody.

    Applicability of the Rogers Threshold Test for Claims of Trademark Infringement

    The Rogers threshold test is applied before continuing on to a likelihood of confusion inquiry only when there is a non-commercial use of another’s trademark that is protected under the First Amendment as an “expressive work.” When an “expressive work” is at issue, an infringement claim is subject to the Rogers test, which requires dismissal of such claim at the outset unless the complainant can show one of two things:

    1. that the challenged use of a mark has no artistic relevance to the underlying work; or
    2. that it explicitly misleads as to the source or content of the work.

    The Court of Appeals for the Ninth Circuit determined that the Jack Daniel’s infringement claim was subject to the threshold Rogers test, finding that the Bad Spaniels dog toy qualified as an “expressive work.” The Supreme Court disagreed with the Ninth Circuit’s election to apply the Rogers test, because the court does not consider the use of the Bad Spaniels trademark and trade dress as “expressive” under the First Amendment. Instead, VIP used the Bad Spaniels marks commercially and as an identifier of the source for the dog toy – also known as a trademark use. Put another way, VIP does not use the Bad Spaniels trademark and trade dress merely to parody Jack Daniel’s; they are also used to market and sell VIP’s dog toy products. While VIP’s attempt to parody Jack Daniel’s does not justify application of the Rogers threshold test, VIP’s parodic use of the trademarks may factor into assessing the likelihood of confusion analysis on remand.

    Applicability of “Noncommercial Use” Exclusion for Claims of Dilution by Tarnishment

    The lower courts disposed of Jack Daniel’s dilution by tarnishment claim for similar reasons. Since the use of Bad Spaniels trademark and trade dress constituted parody or humorous commentary, such use is “noncommercial” and protected by fair use. The Supreme Court reasoned that while the noncommercial use exclusion casts a wide net, it cannot be applied to every instance of parody or humorous commentary, especially in instances where, as in this case, the trademarks at issue are also used to designate the source of a product. Therefore, Jack Daniel’s claim for trademark dilution also survived on remand.

    Heightened Scrutiny of Survey Evidence when Challenged Mark Involves Parody

    Prior to the Ninth Circuit’s reversal, Jack Daniel’s submitted likelihood of confusion survey evidence to the district court that convinced the court that consumers were likely to be confused about the source of the Bad Spaniels dog toy.

    In light of the survey evidence presented, Justice Sotomayor, joined by Justice Alito, submitted a concurring opinion that explained the need for lower courts to be cautious when assessing survey evidence for a likelihood of confusion analysis in instances where an alleged trademark infringement involves parody or potential other uses implicating First Amendment protections. The concern arises because of the risk that courts may give undue weight to surveys where the survey answers reflect a respondent’s mistaken belief that all parodies require permission from the owner of the parodied marks.

    As a result, brands with the resources to commission “cleverly designed” surveys could prompt confusion that would not arise organically in the market, which may lead to the improper silencing of parodies. Justice Sotomayor’s concurring opinion signals an additional consideration for litigants crafting a likelihood of confusion survey where use of the challenged mark involves First Amendment activity.

    The outcomes when First Amendment protected activity and trademark rights intersect are often difficult to predict because a court must balance freedom of expression and the right to satirize or parody while also enforcing protections conferred by trademarks. If you have any questions about trademark use versus parody or any related issue, please feel free to contact me at bschwartz@norris-law.com. Ben thanks Sajani Patel, a summer associate with Norris McLaughlin, P.A., for her contributions to this blog.

    Associate
    Benjamin D. Schwartz
    Visit Profile

    Related Posts

    Liability of AI Platforms for Copyright Infringement: What Every Business Should Know Before Using Generative AI Lamar Jackson Successfully Opposes Dale Earnhardt Jr.’s Claim to No. 8 Who Owns a Vibe? Content Creators Battle Over Aesthetics of Social Media Posts

    Share

    Helpful links

    • About Us
    • News
    • Services
    • Blogs
    • Attorneys
    • Articles
    • (COVID-19)
    • Award Methodology
    • Events
    • Join Our Team
    Connect
    Online Payment

    Connect with Us

    • LinkedIn
    • Facebook
    • Twitter
    • Instagram
    • Youtube

    Join our growing team

    We are looking for quality attorneys to help us do more for our clients. At Norris McLaughlin, each attorney has the same opportunity to succeed whether you’re at the beginning of a career or pinnacle of the profession.

    Learn More

    Subscribe to our content

    Receive timely legal information delivered to your inbox

    This field is for validation purposes and should be left unchanged.
    © , Norris McLaughlin, P.A., All Rights Reserved. Attorney Advertising.
    VIEW OUR DISCLAIMER,  TERMS OF USE,  AND PRIVACY POLICY

    We use cookies to ensure that we give you the best experience on our website. If you continue to use this site we will assume you consent to our cookie policy. Learn more