In November of last year we blogged about how the United States Supreme Court had four intellectual property cases lined up for decisions. One of those cases was JACK DANIEL’S PROPERTIES, INC. V. VIP PRODUCTS LLC, and the Supreme Court reached a unanimous decision on June 8, 2023.
Importantly, the protected trademark at issue was the shape of the Jack Daniel’s bottle and not the “Jack Daniel’s” name. The following graphic is from briefing in the case and shows the trademarks side-by-side:
The case background and specific questions decided by the Court were:
Respondent VIP Products LLC markets and sells dog toys that trade on the brand recognition of famous companies such as petitioner Jack Daniel’s Properties, Inc. The district court found that VIP’s use of Jack Daniel’s trademarks to sell poop-themed dog toys was likely to confuse consumers, infringed Jack Daniel’s marks, and tarnished Jack Daniel’s reputation. The Ninth Circuit, however, held that VIP’s First Amendment interest in using Jack Daniel’s trademarks as its own marks on funny dog toys conferred special protection from infringement claims and rendered VIP’s commercial dog toys “noncommercial” and thus exempt from dilution-by-tarnishment claims.
The questions presented are:
I. Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims.
2. Whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act.
As to the first question, the Court found that since the dog toy was a commercial product shaped like the Jack Daniel’s registered trademark bottle and – very importantly – since VIP Products conceded that it was using that shape as a trademark source identifier for its own goods, then there is *no* heightened First Amendment protection as found in the Rogers test.
Similarly, as to the second question, the Court found that since VIP Products was using the shape of the toy (which was the same as the shape of the protected bottle) as a source identifier/trademark, then the “noncommercial fair use” defense provision of the dilution statute did not apply.
In sum, this is a big win for trademark owners seeking to stamp out parodies of its products. However, as the Court noted, it is a narrow ruling applicable only to parodic uses where the use includes use as a trademark.
Here’s our question: If VIP Products had printed the same graphics and text like “The Old No. 2 on your Tennessee Carpet” and made essentially the same toy but in a rectangular chew-toy shape, would this Supreme Court decision still apply?
We have blogged many times about protecting nontraditional trademarks, including the shape of candy, the shape of a hotel, and the shape of a Halloween mask. If you need to obtain a trademark or service mark registration for a “nontraditional” mark, contact us. Businesses are better served by professionals who remain on the cutting edge of technology and the law. Hiring a trademark attorney who understands the USPTO’s treatment of unique marks, such as bottle shapes, is one important step in providing you with strategic IP solutions and not merely IP services.
Call or click here to get started on protecting your IP today.
