Jack Daniel’s & Bad Spaniels – When Parody Becomes Costly
By Michael C. Antone, US Registered Patent Attorney
VIP Products introduced a squeaky, chewable dog toy designed to look like a bottle of Jack Daniel’s whiskey, but with the wording on the label changed. For example, the words “Bad Spaniels” was substituted for “Jack Daniel’s” and “Old No. 7 Brand Tennessee Sour Mash Whiskey” was changed to “The Old No. 2 On Your Tennessee Carpet”.
Jack Daniel’s Inc. sued VIP Products for trademark infringement and dilution. VIP Products’ defense was that the similarity to the Jack Daniel’s marks was parody and thus allowable under trademark law.
The US Supreme Court issued an 8-0 decision finding the VIP Products’ toy infringed and diluted Jack Daniel’s trademarks. The court found:
1) the appearance of the toy served as a trademark identifying the source of the toy as VIP Products,
2) VIP’s trademarks are confusingly similar to and dilute the value of the Jack Daniel’s trademarks, and
3) the parody exception to trademark infringement and dilution does not apply when a trademark is being used to identify the alleged infringer or diluter as the source of the goods.
The case is a strong reminder that when choosing a trademark, care must be taken to avoid using another party’s trademark, even for dissimilar goods and services, if it can be argued that your choice of a trademark is intended to trade off the goodwill of another’s trademark.