Jack Daniel’s Woofs It Against Bad Spaniels at the Ninth Circuit

About 3 years ago, as guest speakers for the National Academy of Continuing Legal Education, our office prepared and presented a CLE webinar on a case decided by the Supreme Court that year: Jack Daniel's Properties v. VIP Products LLC, 143 S.Ct. 1578 (2023) (“The Jack Daniel’s case”).

You’ve probably heard of Jack Daniel’s whiskey, but you probably haven’t heard of VIP Products. VIP Products makes parody dog toys of various alcohol brands, one of which, called Bad Spaniels, pokes fun at Jack Daniel’s product and brand.

With the case’s return to the Ninth Circuit Court of Appeals, trademark owners and entrepreneurs should hear what happened.

Here’s where the Supreme Court left The Jack Daniel’s case in June 2023: the Rogers test, from the case Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), only applies in cases “involving ‘non-trademark uses’—or otherwise said, cases in which ‘the defendant has used the mark’ at issue in a ‘non-source-identifying way.’” Jack Daniel's Properties v. VIP Products LLC, 143 S.Ct. at 1588.

The Rogers test was meant to be a threshold filter for the use of a trademark. When, in that case, the title of a movie “with at least some artistic relevance” was not “explicitly misleading as to source or content,” the infringement claim could not go forward against the defendant. By comparison, in The Jack Daniel’s case, the marks at issue were being used by VIP Products as source identifiers. Therefore, the usual Likelihood-of-Confusion and Trademark Dilution tests had to be applied to the case by the lower courts.

As we predicted in our CLE presentation in 2023, the case was sent back to the District Court, where it revisited the questions of Likelihood of Confusion and Trademark Dilution. There, the District Court found against Jack Daniel’s on Likelihood-of-Confusion but found in favor of Jack Daniel’s on Trademark Dilution. VIP Products appealed the decision once again to the Ninth Circuit on the issue of Trademark Dilution by Tarnishment.

Many trademark owners and entrepreneurs may be far less aware of dilution than of run-of-the-mill, Likelihood-of-Confusion-based infringement. The Federal Trademark Dilution Act of 1995 (FTDA) was made law “to protect famous trademarks from subsequent uses that blur the distinctiveness of the mark or tarnish or disparage it, even in the absence of a likelihood of confusion.” Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 431 (quoting H.R. Rep. No. 104-374, at 2 (1995)). Congress amended the FTDA in 2006, making possible both claims of trademark dilution by blurring and trademark dilution by tarnishment, and setting the standard as “likelihood of dilution”.

To prove dilution by tarnishment, a plaintiff has to (i) establish that its mark is famous (and we mean really famous, like McDonald’s® type famous), (ii) the allegedly diluting mark is similar to the famous one, and (iii) the diluting mark creates a mental association with the famous mark likely to damage the famous mark’s reputation.

During our NACLE 2023 presentation, we speculated that, given the Ninth Circuit's eagerness to apply the Rogers test, it would view the Bad Spaniels trademarks as some form of fair use protected by parody. However, without the Rogers test available, our office was split on how the Ninth Circuit would rule should the case come back.

Well, on August 4, 2026, we found out!

The Ninth Circuit found that even though Jack Daniel’s JACK DANIEL’S mark and the whiskey’s trade dress are famous, Jack Daniel’s had not established that the OLD NO. 7 mark is independently famous, so it can’t be tarnished in the same way the other marks can. VIP Products conceded on the similarity of the marks, meaning that the court did not have to reach a decision on that element.

Then, it came down to whether the VIP Products marks create a mental association with the famous Jack Daniel’s marks likely to damage the famous mark’s reputation. The Ninth Circuit held that the District Court improperly relied on testimony of Dr. Itamar Simonson, an expert witness for Jack Daniel’s, because it did not show the BAD SPANIELS marks were likely to damage the reputation of Jack Daniel’s famous marks.

The Ninth Circuit emphasized likelihood of dilution is the relevant standard not actual dilution. But parody makes it difficult for the courts to reach that likelihood.

The Ninth Circuit cited another famous parody dog toy case in their decision, Haute Diggity Dog, noting that while “parody is not automatically a complete defense to a claim of dilution” because “the defendant uses the parody as its own designation of source,” the TDRA “does not require a court to ignore the existence of a parody that is used as a trademark.” Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 266–67 (4th Cir. 2007). Nor does it “preclude a court from considering parody as part of the circumstances to be considered for determining whether the plaintiff has made out a claim for dilution.” Id.

The clear parody intent of VIP Products’ BAD SPANIELS marks won the day because where a parody is successful and “not particularly subtle,” it’s common sense that consumers are more “likely to see [it] as the joke it was intended to be.”  Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 503 (2d Cir. 1996). Jack Daniel’s expert, Dr. Simonson, never drew a connection to damage to Jack Daniel’s reputation; he only recognized the successful parody because BAD SPANIELS brought JACK DANIEL’S to mind.

 So, what now? Is the case over?

Not yet! Jack Daniel’s could seek certiorari from the Supreme Court again.

But will the Supreme Court take up the case again?

We don’t think so. We speculated in 2023 that if the Ninth Circuit rules in favor of Jack Daniel’s, it would create what we lawyers call a “circuit split” between the Ninth Circuit’s decision in this case and the Fourth Circuit’s decision in Haute Diggity Dog. Basically, that means that the Circuits made vastly different, opposing rulings on very similar patterns of fact and law.

That didn’t happen. 

The Ninth Circuit cited and agreed with both the Fourth Circuit and the Second Circuit in its decision. The Supreme Court could still take the case if it believes the law has been misapplied, but with such a full docket, the Ninth Circuit’s ruling is likely to stand.

What does all this mean for business owners? 

1. Don’t assume “parody” is a get-out-of-jail-free card.

If you use another company’s trademark or trade dress as part of your own product branding, the court may treat your use as a source-identifying trademark use, not merely an expressive joke. You’ll end up just like VIP Products and have to contend with the ordinary likelihood-of-confusion and trademark dilution tests.

Moreover, if you build a parody product, make the joke clear! Even though parody is not automatically a complete defense, courts may consider whether the parody is obvious and successful. The clearer the joke, the harder it may be for the brand owner to prove tarnishment.

2. “Famous” brands get a different layer of protection.

Trademark dilution protects famous marks from uses that may blur their distinctiveness or tarnish their reputation, even without ordinary consumer confusion. That means very well-known brands like McDonalds®, Coca Cola®, Nike®, Starbucks®, and other nationally and internationally known brands may have claims that smaller or less famous brands do not.

3. You must prove every element of a dilution claim.

Unlike the factors of the likelihood-of-confusion test, each element of the dilution test is mandatory. It’s not enough to say, “People think of my brand when they see the other product.” You have to show that the accused mark creates a mental association that is likely to damage the famous mark’s reputation.

That very lack of evidence as to the reputational lost The Jack Daniel’s case. Had Jack Daniel’s witness’s testimony been better, had they introduced survey evidence, or found social media comments or reviews showing damage to their reputation, we might be looking at an entirely different result.

4. Business owners should protect the exact brand assets they rely on. 

Jack Daniel’s had famous rights in JACK DANIEL’S and its trade dress, but the Ninth Circuit found that Jack Daniel’s had not established that OLD NO. 7 was independently famous for dilution purposes. A large trademark portfolio can be a great asset to show the strength of individual marks, but each mark must stand alone for its protection and level of fame.

Our takeaway is that if a particular name, label, slogan, design, or trade dress matters to your business, build and document the strength of that specific asset. Beyond filing for registration, making a lesser mark a focus of an ad campaign or branding a new product or service with it can add to both its strength and fame.

5. Litigation can be long. Very long.

The Jack Daniel’s case began way back in 2014 with a cease and desist sent to VIP Products. It didn’t see a Supreme Court decision until nine years later in June of 2023. Now after another three years in 2026, it is in its second decade, saw an additional judgement from the Ninth Circuit, and the case might still not be over!