Ninth Circuit Revisits the "Bad Spaniels" Case, Delivering Another Important Trademark Ruling

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In 2023, we discussed the U.S. Supreme Court's decision in Jack Daniel's Properties, Inc. v. VIP Products LLC, where the Court held that parody marks used as source identifiers are not entitled to special First Amendment protection from trademark infringement claims. As we explained in our earlier post, the Supreme Court sent the dispute back to the lower courts for further consideration under traditional trademark principles rather than the heightened First Amendment analysis applied by the Ninth Circuit.

Now, the case has returned to the Ninth Circuit, which has issued another noteworthy decision addressing Jack Daniel's claim that VIP Products' "Bad Spaniels" dog toy diluted its famous trademarks by tarnishment. In reversing the district court, the appellate court concluded that Jack Daniel's failed to establish that the parody product harmed the reputation of its marks, vacating the permanent injunction that had prohibited sales of the toy. The decision marks the latest chapter in a trademark dispute that has spanned more than a decade and continues to shape the law surrounding parody, dilution, and the protection of famous brands.

The litigation began in 2014 after Jack Daniel's objected to VIP Products' "Bad Spaniels" squeaky dog toy, which mimics the distiller's iconic square whiskey bottle while replacing familiar branding with dog-themed humor. Instead of complying with a cease-and-desist letter, VIP filed suit seeking a declaration that its product did not infringe or dilute Jack Daniel's trademark rights.

Since then, the case has made multiple trips between the district court, the Ninth Circuit, and the U.S. Supreme Court, becoming one of the most closely watched trademark disputes involving parody products.

Following the Supreme Court's 2023 ruling, the district court determined that consumers were not likely to be confused about the source of the toy, but nonetheless found that the product diluted Jack Daniel's famous marks by tarnishment because it associated the brand with dog excrement. The court entered a permanent injunction prohibiting further sales of the toy. The Ninth Circuit has now reversed that ruling.

‍According to the appellate court, Jack Daniel's failed to present sufficient evidence that the parody toy was likely to damage the reputation of its famous trademarks. The court emphasized that the product is an obvious parody and concluded that the record did not support a finding that the toy's humorous references created the type of reputational harm necessary to establish dilution by tarnishment stating:

“Jack Daniel’s did not meet its burden to show dilution by tarnishment. The only marks it proved famous were “Jack Daniel’s” and its registered trade dress. Similarity was not disputed, but neither Bad Spaniels nor the toy’s trade dress facially tarnished Jack Daniel’s corresponding famous marks, and neither was portrayed in an unwholesome or unsavory context that was likely to tarnish the reputation of the famous marks.”

‍The court also found shortcomings in the expert testimony presented by Jack Daniel's, explaining that generalized theories about consumer associations were insufficient without evidence showing that the specific parody product actually tarnished the famous marks.

Although the Supreme Court previously rejected the argument that parody products automatically receive heightened First Amendment protection, this latest opinion demonstrates that parody remains an important consideration in trademark litigation.

The Ninth Circuit recognized that consumers who readily understand a product to be an obvious parody may be less likely to view the famous trademark in a negative light. As a result, trademark owners asserting dilution by tarnishment must present evidence that the parody is likely to harm the reputation of the famous mark.

The decision also reinforces that dilution claims remain highly fact specific. Even where a parody deliberately calls a famous brand to mind, courts will carefully examine whether the challenged use actually creates the type of negative association the Trademark Dilution Revision Act was designed to prevent.

‍While the "Bad Spaniels" dispute may finally be approaching its conclusion, its influence on trademark law is likely to endure. We will continue to watch the case as an important guide for future disputes involving parody, dilution, and the protection of famous trademarks.

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