trademark law fair use

Jack Daniel’s Petitions for Certiorari to Clarify Trademark Fair Use

In April, we blogged about the Ninth Circuit’s ruling in the matter of VIP Products LLC v. Jack Daniel’s Properties, Inc. VIP Products LLC (“VIP”) designs chew toys that are made to humorously resemble well-known alcohol and soda brands. Naturally, VIP created a chew toy modeled after the Jack Daniel’s Properties, Inc. (“Jack Daniel’s”) iconic whiskey bottle. After receiving a cease and desist letter from Jack Daniel’s, VIP sought a declaratory judgment from a district court in Arizona that its chew toy did not infringe upon, or dilute, any of Jack Daniel’s trademark rights. The district court ruled in favor of Jack Daniel’s. On appeal, the Ninth Circuit ruled that VIP’s chew toy was an expressive work entitled to fair use protection under the First Amendment and, as such, overturned the lower court decision. On September 15, 2020, Jack Daniel’s petitioned the United States Supreme Court (“Supreme Court”) to review the case. The Supreme Court has until November 18, 2020, to determine whether they will grant certiorari.

What are the Legal Issues Before the Supreme Court?

Fair Use and the Supreme Court

Jack Daniel’s petitioned for certiorari because, as it points out in its petition, the various courts of appeal across the country are divided on how to analyze the issue of humorous fair use (satire) in trademark infringement cases. Specifically, Jack Daniel’s is seeking the answer to the following questions: 1) whether there are circumstances where the use of humor entitles brands to special protections against liability for trademark infringement; and 2) whether a claim of dilution by tarnishment under the Lanham Act is barred because the use of humor in connection with a commercial product would make it “noncommercial.”

Importance of Retaining a Trademark Attorney

As is evident by the case at hand, trademark law can be very subjective. Hiring a trademark attorney early in the brand development process can help: 1) prevent any delays in registering marks with the United States Patent and Trademark Office (“USPTO”); 2) avoid receiving cease and desist letters from competing brands; and 3) educate businesses on any viable fair use defenses. 

As of October 19, 2020, six (6) amicus briefs have been filed on behalf of Jack Daniel’s and none on behalf of VIP. It will be interesting to see whether the Supreme Court decides to address the trademark questions at issue in the Jack Daniel’s dog chew case. We will continue to monitor this case and update our readers if and when certiorari is granted. 

If you are involved in a trademark dispute or need legal counsel in connection with your brand strategy, please email 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 expert attorney. 

Attorney Advertising

Related Blog Posts

“Terrible Towel” Lawsuit a Good Reminder to Consult a Trademark Lawyer

A Trademark Lawyer Can Guide you to Obtaining a Strong Trademark

Responding to Trademark Office Actions


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.

Trending Topics

data CIPA law Swigert law consumer protection data on cumputer screen

Swigart Law Group CIPA Demands

Readers of this blog likely know about the wave of consumer privacy litigation directed at online companies’ collection of consumer data. A litany of these

Read More »