Is Trademark Protection Going to the Dogs?

The Ninth Circuit held in VIP Prods. LLC v. Jack Daniel’s Properties, Inc., 953 F.3d 1170 (9th Cir. 2020), that VIP’s “Bad Spaniels” dog toy mimicking the appearance of a Jack Daniels whisky bottle was protected expression under the First Amendment, such that Jack Daniels’ infringement claim had to be assessed under the rigorous standard set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Under Rogers, Jack Daniels’ infringement claim could proceed only if the distiller showed that VIP’s use of the Jack Daniels’ trademarks and trade dress either: 1) is not artistically relevant to the toy; or 2) explicitly misleads consumers as to the source or content of the toy. Following a remand and then summary affirmance by the Ninth Circuit, No. 21-16969, 2022 WL 1654040 (9th Cir March 18, 2022), the Supreme Court granted certiorari on November 21, 2022 to consider the principal question whether humorous use of another’s mark on a commercial product should be assessed under Rogers or the traditional multipart test of likelihood of confusion. (The case also raises issues of trademark dilution not directly addressed here.)