Background
VIP Products sells parody dog toys, including “Bad Spaniels,” a squeaky toy styled after Jack Daniel’s Old No. 7 whiskey bottle. The toy substitutes phrases including “Old No. 2 On Your Tennessee Carpet,” “43% POO BY VOL.,” and “100% SMELLY,” and carries a disclaimer that it is not affiliated with Jack Daniel Distillery.
VIP sought a declaration of noninfringement and nondilution; Jack Daniel’s counterclaimed. After earlier Ninth Circuit and Supreme Court proceedings, the district court found no likelihood of consumer confusion but held VIP liable for dilution by tarnishment under the Trademark Dilution Revision Act and entered a permanent injunction. VIP appealed.
The Court’s Holding
The Ninth Circuit vacated the injunction and remanded with instructions to enter judgment for VIP on Jack Daniel’s federal tarnishment claim. To establish dilution by tarnishment, the court held, a plaintiff must prove that its mark is famous, that the junior mark is similar, and that the association between them is likely to damage the famous mark’s reputation.
Jack Daniel’s proved fame only for the “Jack Daniel’s” mark and its registered trade dress—not separately for “Old No. 7.” Although similarity was undisputed, neither “Bad Spaniels” nor its trade dress was facially tarnishing. Jack Daniel’s expert offered only generalized consumer-psychology testimony, without evidence that this particular parodic dog toy was likely to harm the reputation of Jack Daniel’s famous marks. The analysis also improperly failed to account for the toy’s obvious parody.
Key Takeaways
- Fame under the TDRA must be established for each asserted mark; one mark cannot borrow fame from another.
- A negative association alone does not prove tarnishment; the plaintiff must show likely reputational harm to the particular famous mark.
- Even when a parody is source-identifying and outside the TDRA’s statutory parody exception, its obvious parodic nature remains relevant to whether tarnishment is likely.
Why It Matters
The decision narrows the evidentiary path for dilution-by-tarnishment claims involving parody products. Owners of famous marks must connect the asserted junior mark to likely reputational injury, rather than relying on broad assumptions that an unsavory theme will taint any associated brand.
The ruling also confirms that the Supreme Court’s 2023 decision did not make source-identifying parodies automatically actionable for dilution. Parody can still bear on the likelihood that consumers will view a product as harming a famous mark’s reputation.