trademark law

Jack Daniels Chewed Up by Trademark Law

VIP Products LLC (“VIP”) designs, markets and sells “Silly Squeakers” dog toys that are often made to humorously resemble well-known beverage containers. In 2013, VIP fashioned the Bad Spaniels Silly Squeaker (“Bad Spaniels”) dog toy to resemble a Jack Daniel’s whiskey bottle and altered the label by: 1) replacing “Jack Daniel’s” with “Bad Spaniels;” 2) changing “Old No. 7” to “Old No. 2;” and 3) altering alcohol content descriptions to read “42% POO BY VOL.” and “100% SMELLY.”   In 2014, Jack Daniel’s Properties, Inc. (“Jack Daniel’s”) directed that VIP cease and desist all sales of the Bad Spaniels toy on the basis that such sales violated its trademark law rights. VIP responded by bringing an action in Arizona District Court, seeking a declaratory judgement that the Bad Spaniels toy does not infringe upon, or dilute, any of Jack Daniel’s trademark rights. The Arizona District Court ruled in favor of Jack Daniel’s, finding that: 1) “Jack Daniel’s trade dress and bottle design were distinctive, non-generic, and nonfunctional, and therefore entitled to trademark protection;” 2) VIP diluted and infringed upon Jack Daniel’s trademarks and trade dress; and 3) VIP was not entitled to defenses of nominative and First Amendment fair use. On appeal, the Ninth Circuit affirmed the District Court’s ruling with respect to trade dress, reversed the District Court’s opinion on trademark dilution, and vacated the District Court’s findings on trademark infringement, ruling that “the Bad Spaniels toy was an expressive work entitled to First Amendment protection.”

What does the 9th circuit’s decision mean for trademark owners?

Consistent Trademark Law

Trademark law creates a natural tension between trademark owners’ rights and the First Amendment. Courts of law are tasked with deciding when the use of a third party’s trademark constitutes freedom of expression or trademark infringement. Fortunately for the Ninth Circuit, this was not the first instance that a court had ruled on the legality of a company selling a dog toy that included content resembling that of a famous brand. In 2007, the Fourth Circuit Court of Appeals determined that Haute Diggity Dog, LLC’s (“Haute Diggity Dog”) “Chewy Vuiton” dog toy was a parody of the Louis Vuitton handbag mark and trade dress and, therefore, did not constitute actionable trademark infringement. In the Bad Spaniels matter at hand, the Ninth Circuit recognized the parallels between the two respective cases and agreed with the Fourth Circuit, ruling that such humorous expressive works are permissive fair use under the First Amendment. 

Policing Trademarks

Trademark owners have a duty to actively protect their marks. Businesses that fail to police their marks risk the weakening, or even eventual loss, of their trademark rights. Jack Daniel’s took the correct measures in acting to protect its mark on the facts at hand. Unfortunately for Jack Daniel’s, under these circumstances, the Court of Appeals ruled against it. 

Trademark law is a subjective area of practice that requires creative solutions on a wide range of issues. If you are interested in learning more about this topic, would like assistance with policing your mark, or if you are involved in a trademark dispute, please e-mail us at, or call us at (212) 246-0900.

The material contained herein is provided for informational purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney. Each situation is unique, and you should not act or rely on any information contained herein without seeking the advice of an experienced attorney. 

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David Klein

David Klein is one of the most recognized attorneys in the technology, Internet marketing, sweepstakes, and telecommunications fields. Skilled at counseling clients on a broad range of technology-related matters, David Klein has substantial experience in negotiating and drafting complex licensing, marketing and Internet agreements.

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