The pet industry is a multi-billion dollar industry, particularly in the U.S. There is a trend for us to “humanize” our pets. Many people dress their pets in clothes or buy them toys that resemble human products, usually with a “pet twist”. Examples include dog toys in the shape of a beer can sporting the name “Barkweiser”, plush handbag chew toys with the name “Chewy Vuitton”, and perfume bottle chew toys named “Chewnel No. 5”. In the instant case, a whiskey bottle dog toy with the name “Bad Spaniels” sent Jack Daniel’s howling about trademark infringement.

District Court finds trademark infringement

 Jack Daniel’s Properties, Inc. (Jack Daniel’s), the company that manufactures Jack Daniel’s whiskey, sued VIP Products, LLC (VIP), manufacturers of the “Bad Spaniels Silly Squeaker” dog toy, for trademark infringement. The dog toy resembled a bottle of Jack Daniel’s Old No. 7 Black Label Tennessee Whiskey but substituted dog-related alterations. Such alterations included the name “Bad Spaniels” instead of “Jack Daniel’s’; “Old No. 2” instead of “Old No. 7”; and “43% POO BY VOL” and “100% SMELLY” for the alcohol content descriptions. The District Court sided with Jack Daniel’s in finding dilution by tarnishment. The Court also found trademark infringement of its trade dress. The District Court issued a permanent injunction against VIP for manufacturing and selling any additional Bad Spaniels dog toys. VIP appealed the decision to the Ninth Circuit Court of Appeals.

Court of Appeals reverses

The Court of Appeals affirmed the District Court ruling on Jack Daniel’s trade dress in the combination of the shape of the bottle and label elements are distinctive, and thus entitled to trademark protection. However, the Court of Appeals vacated the judgment on trademark infringement and the permanent injunction reasoning that the dog toy is an expressive work entitled to First Amendment protection.

The Court of Appeals stated that the dog toy communicates a humorous message. The Court compared the case to one decided by the Fourth Circuit Court of Appeals in which Louis Vuitton sued a dog toy manufacturer. The dog toy manufacturer sold plush dog toys shaped like a purse and labeled “Chewy Vuitton”. In that case, the Fourth Circuit held that the dog toys were parodies on the Louis Vuitton handbags protected under the First Amendment. Thus, the toys did not infringe on Louis Vuitton’s trademark. Similarly in this case, the Court of Appeals found Jack Daniel’s was barking up the wrong tree with its trademark infringement claim. In light of the verdict, Jack Daniel’s likely thinks the trademark system has gone to the dogs.

Michele Lawson

Michele Lawson is a U.S. Registered Patent Attorney.