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Food and Beverage
15 min read
Areas of Expertise :
Advertising, Marketing, Trademarks, Consumer Survey, Intellectual Property
Published Date:
Last Modified Date:
Jurisdiction:
Federal. Ninth Circuit
Jack Daniel’s Properties, Inc. v. VIP Products LLC concerned “Bad Spaniels,” a squeaky dog toy modeled on the appearance of a bottle of Jack Daniel’s Old No. 7 Tennessee Whiskey while replacing portions of the whiskey label with dog-related jokes. Jack Daniel’s alleged that VIP Products infringed its trademarks and trade dress and diluted its famous marks. VIP maintained that Bad Spaniels was a parody and argued that its use of Jack Daniel’s imagery was expressive. VIP filed a declaratory judgment action in federal court in Arizona in 2014 after Jack Daniel’s demanded that it stop selling the toy.
The litigation later reached the U.S. Supreme Court, which held in 2023 that the Rogers v. Grimaldi threshold test does not apply when a defendant uses the challenged designation as a trademark identifying the source of its own goods. The Court did not decide whether VIP was liable for infringement or dilution. On remand, the District of Arizona found no trademark or trade dress infringement but ruled for Jack Daniel’s on dilution by tarnishment. On August 4, 2026, the Ninth Circuit concluded that Jack Daniel’s had not established federal dilution by tarnishment, vacated the permanent injunction, and remanded for entry of judgment for VIP on the federal dilution claim.
VIP Products filed a declaratory judgment action against Jack Daniel’s Properties in the U.S. District Court for the District of Arizona after Jack Daniel’s demanded that VIP stop selling its Bad Spaniels dog toy. VIP sought a declaration that Bad Spaniels did not infringe or dilute Jack Daniel’s trademark rights. Jack Daniel’s responded with counterclaims alleging federal and state trademark and trade dress infringement and dilution. The initial pleadings placed consumer confusion, dilution, and VIP’s parody arguments at the center of the dispute.
After receiving permission from the district court to amend its pleadings, VIP filed amended claims addressing Jack Daniel’s asserted trade dress and bottle design. VIP challenged the distinctiveness and nonfunctionality of aspects of the asserted trade dress and sought cancellation of Jack Daniel’s federal registration for its bottle design. These claims expanded the litigation beyond VIP’s original request for declarations concerning infringement and dilution.
The district court began a four-day bench trial addressing the remaining trademark infringement, trade dress, and dilution claims. The evidence addressed the appearance and marketing of Bad Spaniels, consumer recognition of Jack Daniel’s marks and trade dress, and whether consumers were likely to believe that Jack Daniel’s made, sponsored, or approved the toy.
Jack Daniel’s relied on the survey and deposition testimony of Dr. Gerald Ford, a marketing and marketing-research expert who conducted a likelihood-of-confusion survey. Ford reported that more than 29% of respondents in the test group identified Jack Daniel’s when asked who made, sponsored, or approved Bad Spaniels. VIP relied on Dr. Stephen Nowlis, a marketing expert who challenged Ford’s survey methodology and conclusions. Jack Daniel’s also presented testimony from Dr. Itamar Simonson, a marketing and consumer-behavior expert addressing dilution by tarnishment, while VIP relied on Bruce Silverman, an advertising, marketing, and branding consultant who arranged focus groups examining consumer reactions to the parody product.
Following the bench trial, the district court entered findings of fact and conclusions of law in favor of Jack Daniel’s on the remaining infringement and dilution claims. The court found that Bad Spaniels created a likelihood of consumer confusion and diluted Jack Daniel’s trademarks and trade dress by tarnishment.
In evaluating confusion, the court credited Dr. Ford’s survey evidence over Dr. Nowlis’s objections. On dilution, the court gave greater weight to Dr. Simonson’s testimony concerning negative associations between Jack Daniel’s whiskey and the toy’s dog-excrement references than to Silverman’s focus-group evidence. The court later entered a permanent injunction restricting VIP from manufacturing and selling Bad Spaniels.
The Ninth Circuit affirmed the district court’s rulings that Jack Daniel’s trade dress and bottle design were distinctive and aesthetically nonfunctional. It also upheld the validity of the registered bottle-design mark and rejected VIP’s nominative fair-use arguments.
The appellate court concluded, however, that Bad Spaniels qualified as an expressive work and vacated the infringement judgment because the district court had not first applied the Rogers v. Grimaldi test. The Ninth Circuit separately reversed the federal and state dilution rulings based on its treatment of the toy’s humorous message and vacated the permanent injunction. The infringement claims returned to the district court for consideration under Rogers.
On remand from the 2020 decision, the district court applied Rogers and concluded that Jack Daniel’s could not satisfy the test. The court entered summary judgment for VIP on infringement and judgment for VIP on dilution.
Jack Daniel’s appealed. On March 18, 2022, the Ninth Circuit summarily affirmed the district court at the parties’ request, leaving judgment in VIP’s favor before Jack Daniel’s sought review in the U.S. Supreme Court.
The U.S. Supreme Court granted Jack Daniel’s petition for a writ of certiorari. The questions presented addressed whether the Rogers test should apply when another party’s trademarks are used in connection with a commercial product and how parody should be treated under the Lanham Act’s federal dilution provisions.
The parties disputed whether the Bad Spaniels name and design functioned only as expressive parody or also identified VIP as the source of the product. The source-identifying nature of VIP’s use became a central part of the Supreme Court’s review.
The Supreme Court heard oral argument in Jack Daniel’s Properties, Inc. v. VIP Products LLC, No. 22-148. Jack Daniel’s argued that ordinary trademark infringement principles should apply when a defendant uses challenged words or designs as marks for its own goods rather than receiving threshold protection under Rogers.
VIP maintained that Bad Spaniels conveyed an expressive parody entitled to First Amendment consideration. The questioning addressed source-identifying use, parody, likelihood of consumer confusion, and the statutory exclusions governing federal dilution claims.
The Supreme Court unanimously vacated the Ninth Circuit’s judgment. Justice Elena Kagan wrote that Rogers does not apply when a defendant uses the challenged designation as a trademark identifying the source of its own goods. Because VIP used Bad Spaniels and elements derived from Jack Daniel’s as source identifiers, the infringement claim had to be evaluated under the ordinary likelihood-of-confusion framework.
The Court also addressed the Lanham Act’s dilution provisions. It held that the statutory fair-use exclusion for parody, criticism, and commentary does not apply when the challenged material is used as a designation of source for the defendant’s own goods. The Court also rejected VIP’s reliance on the separate noncommercial-use exclusion for its source-identifying use. It did not decide whether VIP was ultimately liable for infringement or dilution and returned those questions for further proceedings.
Following the Supreme Court proceedings and remand, the parties advised the District of Arizona that the unresolved infringement and dilution claims could be decided on the existing trial record without additional fact-finding. The district court therefore reconsidered the claims under the legal standards identified by the Supreme Court.
The existing record included Dr. Ford’s likelihood-of-confusion survey and deposition testimony, Dr. Nowlis’s rebuttal opinions, Dr. Simonson’s consumer-behavior testimony concerning tarnishment, and Silverman’s advertising and focus-group evidence. The district court proceeded without conducting another trial.
The district court heard argument following the Supreme Court remand. For trademark and trade dress infringement, the court returned to the ordinary likelihood-of-confusion analysis rather than applying Rogers as a threshold test.
Jack Daniel’s again relied on Dr. Ford’s survey concerning source, sponsorship, and approval, while VIP relied on Dr. Nowlis’s criticisms of the survey methodology. On dilution, Jack Daniel’s relied substantially on Dr. Simonson’s testimony concerning negative consumer associations, while VIP cited Silverman’s focus-group evidence and challenged whether the record established likely reputational harm.
The District of Arizona filed amended findings of fact and conclusions of law following the Supreme Court remand. Applying the ordinary likelihood-of-confusion framework, the court concluded that Jack Daniel’s had not proven federal trademark or trade dress infringement by a preponderance of the evidence. Although the court continued to credit Dr. Ford’s survey as evidence supporting some actual confusion, it found that the overall likelihood-of-confusion analysis favored VIP after accounting for the parody presented by Bad Spaniels.
The court reached a different conclusion on dilution. It credited Dr. Simonson’s consumer-behavior analysis and gave his testimony greater weight than Silverman’s focus-group evidence. The court found VIP liable for dilution by tarnishment under the federal Trademark Dilution Revision Act and Arizona antidilution law.
Following its dilution determination, the district court entered final judgment and a permanent injunction against VIP. The injunction restricted VIP from manufacturing, advertising, promoting, displaying, distributing, offering for sale, or selling the challenged Bad Spaniels toy.
The relief rested on the dilution determination rather than trademark infringement. The district court entered judgment for VIP on Jack Daniel’s federal trademark and trade dress infringement counterclaims.
VIP filed a notice of appeal challenging the district court’s final judgment and permanent injunction. On March 27, 2025, the Ninth Circuit opened the appeal as VIP Products, LLC v. Jack Daniel’s Properties, Inc., No. 25-2027.
The appellate dispute addressed whether Jack Daniel’s had established dilution by tarnishment and whether the evidentiary record supported the injunction against Bad Spaniels. VIP challenged whether the evidence credited by the district court was sufficient to show that the parody product was likely to harm the reputation of Jack Daniel’s qualifying famous marks.
The Ninth Circuit vacated the permanent injunction and directed the district court to enter judgment for VIP on Jack Daniel’s federal dilution claim. The panel explained that a federal dilution-by-tarnishment plaintiff must establish a famous mark, sufficient similarity to create an association between the challenged mark and the famous mark, and a likelihood that the association will harm the reputation of the famous mark.
The court considered fame on a mark-by-mark basis. It concluded that Jack Daniel’s had established the required fame for the “Jack Daniel’s” word mark and its registered trade dress but had not made the necessary showing for every asserted mark, including “Old No. 7.”
The panel then concluded that the record did not establish likely reputational harm to the qualifying famous marks. The district court had relied substantially on Dr. Simonson’s consumer-behavior testimony, but the Ninth Circuit determined that his generalized consumer-psychology evidence did not support a reasonable inference that Bad Spaniels was likely to damage the reputation of those marks. The panel also considered the parodic nature of the dog toy and rejected the premise that its scatological humor, without sufficient evidence of reputational injury, established federal dilution by tarnishment. The case was remanded for entry of judgment for VIP on the federal dilution claim.
Court:
United States Court of Appeals for the Ninth Circuit
Case Name:
Jack Daniel’s Properties, Inc. v. VIP Products LLC
Trademark Infringement
Trade Dress
Brand Dilution
Likelihood Of Confusion
Lanham Act
Marketing Research
Market Research
Branding
Advertising and Marketing
Jack Daniel’s Properties, Inc. v. VIP Products LLC concerned “Bad Spaniels,” a squeaky dog toy modeled on the appearance of a bottle of Jack Daniel’s Old No. 7 Tennessee Whiskey while replacing portions of the whiskey label with dog-related jokes. Jack Daniel’s alleged that VIP Products infringed its trademarks and trade dress and diluted its famous marks. VIP maintained that Bad Spaniels was a parody and argued that its use of Jack Daniel’s imagery was expressive. VIP filed a declaratory judgment action in federal court in Arizona in 2014 after Jack Daniel’s demanded that it stop selling the toy.
The litigation later reached the U.S. Supreme Court, which held in 2023 that the Rogers v. Grimaldi threshold test does not apply when a defendant uses the challenged designation as a trademark identifying the source of its own goods. The Court did not decide whether VIP was liable for infringement or dilution. On remand, the District of Arizona found no trademark or trade dress infringement but ruled for Jack Daniel’s on dilution by tarnishment. On August 4, 2026, the Ninth Circuit concluded that Jack Daniel’s had not established federal dilution by tarnishment, vacated the permanent injunction, and remanded for entry of judgment for VIP on the federal dilution claim.
VIP Products filed a declaratory judgment action against Jack Daniel’s Properties in the U.S. District Court for the District of Arizona after Jack Daniel’s demanded that VIP stop selling its Bad Spaniels dog toy. VIP sought a declaration that Bad Spaniels did not infringe or dilute Jack Daniel’s trademark rights. Jack Daniel’s responded with counterclaims alleging federal and state trademark and trade dress infringement and dilution. The initial pleadings placed consumer confusion, dilution, and VIP’s parody arguments at the center of the dispute.
After receiving permission from the district court to amend its pleadings, VIP filed amended claims addressing Jack Daniel’s asserted trade dress and bottle design. VIP challenged the distinctiveness and nonfunctionality of aspects of the asserted trade dress and sought cancellation of Jack Daniel’s federal registration for its bottle design. These claims expanded the litigation beyond VIP’s original request for declarations concerning infringement and dilution.
The district court began a four-day bench trial addressing the remaining trademark infringement, trade dress, and dilution claims. The evidence addressed the appearance and marketing of Bad Spaniels, consumer recognition of Jack Daniel’s marks and trade dress, and whether consumers were likely to believe that Jack Daniel’s made, sponsored, or approved the toy.
Jack Daniel’s relied on the survey and deposition testimony of Dr. Gerald Ford, a marketing and marketing-research expert who conducted a likelihood-of-confusion survey. Ford reported that more than 29% of respondents in the test group identified Jack Daniel’s when asked who made, sponsored, or approved Bad Spaniels. VIP relied on Dr. Stephen Nowlis, a marketing expert who challenged Ford’s survey methodology and conclusions. Jack Daniel’s also presented testimony from Dr. Itamar Simonson, a marketing and consumer-behavior expert addressing dilution by tarnishment, while VIP relied on Bruce Silverman, an advertising, marketing, and branding consultant who arranged focus groups examining consumer reactions to the parody product.
Following the bench trial, the district court entered findings of fact and conclusions of law in favor of Jack Daniel’s on the remaining infringement and dilution claims. The court found that Bad Spaniels created a likelihood of consumer confusion and diluted Jack Daniel’s trademarks and trade dress by tarnishment.
In evaluating confusion, the court credited Dr. Ford’s survey evidence over Dr. Nowlis’s objections. On dilution, the court gave greater weight to Dr. Simonson’s testimony concerning negative associations between Jack Daniel’s whiskey and the toy’s dog-excrement references than to Silverman’s focus-group evidence. The court later entered a permanent injunction restricting VIP from manufacturing and selling Bad Spaniels.
The Ninth Circuit affirmed the district court’s rulings that Jack Daniel’s trade dress and bottle design were distinctive and aesthetically nonfunctional. It also upheld the validity of the registered bottle-design mark and rejected VIP’s nominative fair-use arguments.
The appellate court concluded, however, that Bad Spaniels qualified as an expressive work and vacated the infringement judgment because the district court had not first applied the Rogers v. Grimaldi test. The Ninth Circuit separately reversed the federal and state dilution rulings based on its treatment of the toy’s humorous message and vacated the permanent injunction. The infringement claims returned to the district court for consideration under Rogers.
On remand from the 2020 decision, the district court applied Rogers and concluded that Jack Daniel’s could not satisfy the test. The court entered summary judgment for VIP on infringement and judgment for VIP on dilution.
Jack Daniel’s appealed. On March 18, 2022, the Ninth Circuit summarily affirmed the district court at the parties’ request, leaving judgment in VIP’s favor before Jack Daniel’s sought review in the U.S. Supreme Court.
The U.S. Supreme Court granted Jack Daniel’s petition for a writ of certiorari. The questions presented addressed whether the Rogers test should apply when another party’s trademarks are used in connection with a commercial product and how parody should be treated under the Lanham Act’s federal dilution provisions.
The parties disputed whether the Bad Spaniels name and design functioned only as expressive parody or also identified VIP as the source of the product. The source-identifying nature of VIP’s use became a central part of the Supreme Court’s review.
The Supreme Court heard oral argument in Jack Daniel’s Properties, Inc. v. VIP Products LLC, No. 22-148. Jack Daniel’s argued that ordinary trademark infringement principles should apply when a defendant uses challenged words or designs as marks for its own goods rather than receiving threshold protection under Rogers.
VIP maintained that Bad Spaniels conveyed an expressive parody entitled to First Amendment consideration. The questioning addressed source-identifying use, parody, likelihood of consumer confusion, and the statutory exclusions governing federal dilution claims.
The Supreme Court unanimously vacated the Ninth Circuit’s judgment. Justice Elena Kagan wrote that Rogers does not apply when a defendant uses the challenged designation as a trademark identifying the source of its own goods. Because VIP used Bad Spaniels and elements derived from Jack Daniel’s as source identifiers, the infringement claim had to be evaluated under the ordinary likelihood-of-confusion framework.
The Court also addressed the Lanham Act’s dilution provisions. It held that the statutory fair-use exclusion for parody, criticism, and commentary does not apply when the challenged material is used as a designation of source for the defendant’s own goods. The Court also rejected VIP’s reliance on the separate noncommercial-use exclusion for its source-identifying use. It did not decide whether VIP was ultimately liable for infringement or dilution and returned those questions for further proceedings.
Following the Supreme Court proceedings and remand, the parties advised the District of Arizona that the unresolved infringement and dilution claims could be decided on the existing trial record without additional fact-finding. The district court therefore reconsidered the claims under the legal standards identified by the Supreme Court.
The existing record included Dr. Ford’s likelihood-of-confusion survey and deposition testimony, Dr. Nowlis’s rebuttal opinions, Dr. Simonson’s consumer-behavior testimony concerning tarnishment, and Silverman’s advertising and focus-group evidence. The district court proceeded without conducting another trial.
The district court heard argument following the Supreme Court remand. For trademark and trade dress infringement, the court returned to the ordinary likelihood-of-confusion analysis rather than applying Rogers as a threshold test.
Jack Daniel’s again relied on Dr. Ford’s survey concerning source, sponsorship, and approval, while VIP relied on Dr. Nowlis’s criticisms of the survey methodology. On dilution, Jack Daniel’s relied substantially on Dr. Simonson’s testimony concerning negative consumer associations, while VIP cited Silverman’s focus-group evidence and challenged whether the record established likely reputational harm.
The District of Arizona filed amended findings of fact and conclusions of law following the Supreme Court remand. Applying the ordinary likelihood-of-confusion framework, the court concluded that Jack Daniel’s had not proven federal trademark or trade dress infringement by a preponderance of the evidence. Although the court continued to credit Dr. Ford’s survey as evidence supporting some actual confusion, it found that the overall likelihood-of-confusion analysis favored VIP after accounting for the parody presented by Bad Spaniels.
The court reached a different conclusion on dilution. It credited Dr. Simonson’s consumer-behavior analysis and gave his testimony greater weight than Silverman’s focus-group evidence. The court found VIP liable for dilution by tarnishment under the federal Trademark Dilution Revision Act and Arizona antidilution law.
Following its dilution determination, the district court entered final judgment and a permanent injunction against VIP. The injunction restricted VIP from manufacturing, advertising, promoting, displaying, distributing, offering for sale, or selling the challenged Bad Spaniels toy.
The relief rested on the dilution determination rather than trademark infringement. The district court entered judgment for VIP on Jack Daniel’s federal trademark and trade dress infringement counterclaims.
VIP filed a notice of appeal challenging the district court’s final judgment and permanent injunction. On March 27, 2025, the Ninth Circuit opened the appeal as VIP Products, LLC v. Jack Daniel’s Properties, Inc., No. 25-2027.
The appellate dispute addressed whether Jack Daniel’s had established dilution by tarnishment and whether the evidentiary record supported the injunction against Bad Spaniels. VIP challenged whether the evidence credited by the district court was sufficient to show that the parody product was likely to harm the reputation of Jack Daniel’s qualifying famous marks.
The Ninth Circuit vacated the permanent injunction and directed the district court to enter judgment for VIP on Jack Daniel’s federal dilution claim. The panel explained that a federal dilution-by-tarnishment plaintiff must establish a famous mark, sufficient similarity to create an association between the challenged mark and the famous mark, and a likelihood that the association will harm the reputation of the famous mark.
The court considered fame on a mark-by-mark basis. It concluded that Jack Daniel’s had established the required fame for the “Jack Daniel’s” word mark and its registered trade dress but had not made the necessary showing for every asserted mark, including “Old No. 7.”
The panel then concluded that the record did not establish likely reputational harm to the qualifying famous marks. The district court had relied substantially on Dr. Simonson’s consumer-behavior testimony, but the Ninth Circuit determined that his generalized consumer-psychology evidence did not support a reasonable inference that Bad Spaniels was likely to damage the reputation of those marks. The panel also considered the parodic nature of the dog toy and rejected the premise that its scatological humor, without sufficient evidence of reputational injury, established federal dilution by tarnishment. The case was remanded for entry of judgment for VIP on the federal dilution claim.
Marketing and Marketing Research Expert Witness – Dr. Gerald Ford (Jack Daniel’s / Defendant-Counterclaimant)
Jack Daniel’s retained Dr. Gerald Ford to conduct a likelihood-of-confusion survey comparing the Jack Daniel’s Tennessee whiskey bottle and Bad Spaniels. Ford had decades of experience in commercial marketing research and had been accepted as an expert in marketing and marketing research in numerous court and administrative proceedings. His survey reported that more than 29% of respondents in the test group identified Jack Daniel’s when asked about the maker, sponsor, or approver of the toy, and the district court credited his survey evidence.
Marketing Expert Witness – Dr. Stephen Nowlis (VIP Products / Plaintiff-Counterdefendant)
VIP retained Dr. Stephen Nowlis to provide expert rebuttal to Ford’s likelihood-of-confusion survey. Nowlis, who holds a Ph.D. in marketing and an MBA, challenged Ford’s control stimulus, methodology, and conclusions but did not conduct a separate survey or independent research for the case. The district court gave Ford’s survey greater weight and did not accept Nowlis’s objections as sufficient to undermine Ford’s conclusions.
Marketing and Consumer Behavior Expert Witness – Dr. Itamar Simonson (Jack Daniel’s / Defendant-Counterclaimant)
Jack Daniel’s retained Dr. Itamar Simonson, a Stanford professor of marketing, to address consumer behavior and dilution by tarnishment. Relying on consumer-psychology research and the Associative Network Model, Simonson opined that connecting Jack Daniel’s whiskey with references to dog excrement could create negative consumer associations and harm the brand’s reputation. The district court credited his analysis when it found dilution by tarnishment, although the Ninth Circuit later concluded that the record was insufficient to establish federal tarnishment.
Advertising, Marketing, and Branding Expert Witness – Bruce Silverman (VIP Products / Plaintiff-Counterdefendant)
VIP retained Bruce Silverman, an advertising, marketing, and branding consultant, to rebut Simonson’s opinions concerning consumer perception and tarnishment. Silverman arranged four focus groups in West Los Angeles and concluded that participants retained an overall favorable impression of Jack Daniel’s after discussing Bad Spaniels. The district court gave the focus-group results less weight because participants had been told that Bad Spaniels was a spoof and because Silverman’s experience was principally in advertising rather than trademark dilution.
Trademark Infringement Expert Witness
A trademark infringement expert may be retained to evaluate how consumers are likely to perceive the use of a challenged name, logo, packaging, or trade dress and whether that use could suggest source, sponsorship, approval, or affiliation. In litigation involving parody products, this type of expert may also assess marketplace context, branding practices, similarity of commercial presentation, and other factors relevant to a likelihood-of-confusion analysis.
Source-Identifying Use Determines Whether Rogers Applies
The Supreme Court drew a distinction between using another party’s trademark for an expressive purpose and using a challenged designation as a trademark for the defendant’s own goods. When the defendant’s use functions as a source identifier, Rogers does not replace the ordinary likelihood-of-confusion analysis. The presence of parody does not alter that threshold rule.
Parody Remains Part of the Consumer-Confusion Analysis
Removing Rogers from the infringement analysis did not remove parody from the case. The Supreme Court explained that a parody’s message can affect whether consumers are likely to believe that the trademark owner produced, sponsored, or approved the defendant’s product. On remand, the district court evaluated the full record and concluded that Jack Daniel’s had not established likely confusion.
Survey Results Are Considered With the Rest of the Confusion Evidence
Jack Daniel’s relied on Dr. Gerald Ford’s survey reporting more than 29% identification of Jack Daniel’s in response to questions about who made, sponsored, or approved Bad Spaniels, while Dr. Stephen Nowlis challenged Ford’s methodology and interpretation. The survey did not determine the outcome by itself. The district court weighed it with the remaining evidence concerning consumer perception and ultimately entered judgment for VIP on infringement.
Dilution by Tarnishment Requires Evidence of Likely Reputational Harm
Federal dilution by tarnishment does not require proof of likely consumer confusion, but it requires proof that an association between a famous mark and a similar challenged mark is likely to harm the reputation of the famous mark. In 2026, the Ninth Circuit rejected the premise that crude or scatological references on the Bad Spaniels dog toy, without sufficient evidence of likely reputational injury, established federal dilution by tarnishment.
Fame Must Be Established for the Particular Mark Asserted
The 2026 opinion examined fame on a mark-by-mark basis rather than treating all Jack Daniel’s marks as famous collectively. The Ninth Circuit found sufficient proof of fame for the “Jack Daniel’s” word mark and registered trade dress but not for every mark asserted, including “Old No. 7.” A federal dilution claim therefore requires the plaintiff to establish statutory fame for the particular mark allegedly diluted before satisfying the remaining elements of the claim.
Jack Daniel’s v. VIP Products began with VIP’s 2014 declaratory judgment action and proceeded through a 2017 bench trial, two earlier rounds in the Ninth Circuit, and Supreme Court review. The Supreme Court’s 2023 ruling displaced the Rogers threshold test for VIP’s source-identifying use but left infringement and dilution liability unresolved. On remand, the District of Arizona found no trademark or trade dress infringement but found dilution by tarnishment and entered a permanent injunction against Bad Spaniels.
On August 4, 2026, the Ninth Circuit concluded that Jack Daniel’s had not carried its burden on the federal dilution-by-tarnishment claim. The panel determined that the “Jack Daniel’s” word mark and registered trade dress had been proven famous for purposes of the federal claim but found insufficient evidence that Bad Spaniels was likely to damage the reputation of those famous marks. It vacated the permanent injunction and remanded for entry of judgment for VIP on the federal dilution claim.
What was the Jack Daniel’s v. VIP Products lawsuit about?
The dispute concerned VIP Products’ Bad Spaniels dog toy, which borrowed elements from the appearance of a Jack Daniel’s whiskey bottle and replaced portions of the labeling with dog-related jokes. Jack Daniel’s asserted trademark and trade dress infringement and dilution claims.
What is Bad Spaniels?
Bad Spaniels is a squeaky dog toy sold by VIP Products as part of its parody product line. Its label substitutes phrases such as “The Old No. 2 On Your Tennessee Carpet,” “43% POO BY VOL.,” and “100% SMELLY” for wording associated with a Jack Daniel’s whiskey bottle.
Does trademark parody automatically receive protection under the Rogers test?
No. The Supreme Court held that Rogers does not apply when the challenged designation functions as a trademark identifying the source of the defendant’s own goods. Parody can still be considered when a court determines whether consumers are likely to be confused.
Did the Supreme Court find that Bad Spaniels infringed Jack Daniel’s trademarks?
No. The Supreme Court decided which legal framework applied but did not determine infringement liability. After remand, the District of Arizona concluded that Jack Daniel’s had not established trademark or trade dress infringement.
What did the Ninth Circuit decide about Bad Spaniels in 2026?
The Ninth Circuit held that Jack Daniel’s had not established federal dilution by tarnishment. It vacated the permanent injunction against Bad Spaniels and instructed the district court to enter judgment for VIP on the federal dilution claim.
Marketing and Marketing Research Expert Witness – Dr. Gerald Ford (Jack Daniel’s / Defendant-Counterclaimant)
Jack Daniel’s retained Dr. Gerald Ford to conduct a likelihood-of-confusion survey comparing the Jack Daniel’s Tennessee whiskey bottle and Bad Spaniels. Ford had decades of experience in commercial marketing research and had been accepted as an expert in marketing and marketing research in numerous court and administrative proceedings. His survey reported that more than 29% of respondents in the test group identified Jack Daniel’s when asked about the maker, sponsor, or approver of the toy, and the district court credited his survey evidence.
Marketing Expert Witness – Dr. Stephen Nowlis (VIP Products / Plaintiff-Counterdefendant)
VIP retained Dr. Stephen Nowlis to provide expert rebuttal to Ford’s likelihood-of-confusion survey. Nowlis, who holds a Ph.D. in marketing and an MBA, challenged Ford’s control stimulus, methodology, and conclusions but did not conduct a separate survey or independent research for the case. The district court gave Ford’s survey greater weight and did not accept Nowlis’s objections as sufficient to undermine Ford’s conclusions.
Marketing and Consumer Behavior Expert Witness – Dr. Itamar Simonson (Jack Daniel’s / Defendant-Counterclaimant)
Jack Daniel’s retained Dr. Itamar Simonson, a Stanford professor of marketing, to address consumer behavior and dilution by tarnishment. Relying on consumer-psychology research and the Associative Network Model, Simonson opined that connecting Jack Daniel’s whiskey with references to dog excrement could create negative consumer associations and harm the brand’s reputation. The district court credited his analysis when it found dilution by tarnishment, although the Ninth Circuit later concluded that the record was insufficient to establish federal tarnishment.
Advertising, Marketing, and Branding Expert Witness – Bruce Silverman (VIP Products / Plaintiff-Counterdefendant)
VIP retained Bruce Silverman, an advertising, marketing, and branding consultant, to rebut Simonson’s opinions concerning consumer perception and tarnishment. Silverman arranged four focus groups in West Los Angeles and concluded that participants retained an overall favorable impression of Jack Daniel’s after discussing Bad Spaniels. The district court gave the focus-group results less weight because participants had been told that Bad Spaniels was a spoof and because Silverman’s experience was principally in advertising rather than trademark dilution.
Trademark Infringement Expert Witness
A trademark infringement expert may be retained to evaluate how consumers are likely to perceive the use of a challenged name, logo, packaging, or trade dress and whether that use could suggest source, sponsorship, approval, or affiliation. In litigation involving parody products, this type of expert may also assess marketplace context, branding practices, similarity of commercial presentation, and other factors relevant to a likelihood-of-confusion analysis.
Source-Identifying Use Determines Whether Rogers Applies
The Supreme Court drew a distinction between using another party’s trademark for an expressive purpose and using a challenged designation as a trademark for the defendant’s own goods. When the defendant’s use functions as a source identifier, Rogers does not replace the ordinary likelihood-of-confusion analysis. The presence of parody does not alter that threshold rule.
Parody Remains Part of the Consumer-Confusion Analysis
Removing Rogers from the infringement analysis did not remove parody from the case. The Supreme Court explained that a parody’s message can affect whether consumers are likely to believe that the trademark owner produced, sponsored, or approved the defendant’s product. On remand, the district court evaluated the full record and concluded that Jack Daniel’s had not established likely confusion.
Survey Results Are Considered With the Rest of the Confusion Evidence
Jack Daniel’s relied on Dr. Gerald Ford’s survey reporting more than 29% identification of Jack Daniel’s in response to questions about who made, sponsored, or approved Bad Spaniels, while Dr. Stephen Nowlis challenged Ford’s methodology and interpretation. The survey did not determine the outcome by itself. The district court weighed it with the remaining evidence concerning consumer perception and ultimately entered judgment for VIP on infringement.
Dilution by Tarnishment Requires Evidence of Likely Reputational Harm
Federal dilution by tarnishment does not require proof of likely consumer confusion, but it requires proof that an association between a famous mark and a similar challenged mark is likely to harm the reputation of the famous mark. In 2026, the Ninth Circuit rejected the premise that crude or scatological references on the Bad Spaniels dog toy, without sufficient evidence of likely reputational injury, established federal dilution by tarnishment.
Fame Must Be Established for the Particular Mark Asserted
The 2026 opinion examined fame on a mark-by-mark basis rather than treating all Jack Daniel’s marks as famous collectively. The Ninth Circuit found sufficient proof of fame for the “Jack Daniel’s” word mark and registered trade dress but not for every mark asserted, including “Old No. 7.” A federal dilution claim therefore requires the plaintiff to establish statutory fame for the particular mark allegedly diluted before satisfying the remaining elements of the claim.
Jack Daniel’s v. VIP Products began with VIP’s 2014 declaratory judgment action and proceeded through a 2017 bench trial, two earlier rounds in the Ninth Circuit, and Supreme Court review. The Supreme Court’s 2023 ruling displaced the Rogers threshold test for VIP’s source-identifying use but left infringement and dilution liability unresolved. On remand, the District of Arizona found no trademark or trade dress infringement but found dilution by tarnishment and entered a permanent injunction against Bad Spaniels.
On August 4, 2026, the Ninth Circuit concluded that Jack Daniel’s had not carried its burden on the federal dilution-by-tarnishment claim. The panel determined that the “Jack Daniel’s” word mark and registered trade dress had been proven famous for purposes of the federal claim but found insufficient evidence that Bad Spaniels was likely to damage the reputation of those famous marks. It vacated the permanent injunction and remanded for entry of judgment for VIP on the federal dilution claim.
What was the Jack Daniel’s v. VIP Products lawsuit about?
The dispute concerned VIP Products’ Bad Spaniels dog toy, which borrowed elements from the appearance of a Jack Daniel’s whiskey bottle and replaced portions of the labeling with dog-related jokes. Jack Daniel’s asserted trademark and trade dress infringement and dilution claims.
What is Bad Spaniels?
Bad Spaniels is a squeaky dog toy sold by VIP Products as part of its parody product line. Its label substitutes phrases such as “The Old No. 2 On Your Tennessee Carpet,” “43% POO BY VOL.,” and “100% SMELLY” for wording associated with a Jack Daniel’s whiskey bottle.
Does trademark parody automatically receive protection under the Rogers test?
No. The Supreme Court held that Rogers does not apply when the challenged designation functions as a trademark identifying the source of the defendant’s own goods. Parody can still be considered when a court determines whether consumers are likely to be confused.
Did the Supreme Court find that Bad Spaniels infringed Jack Daniel’s trademarks?
No. The Supreme Court decided which legal framework applied but did not determine infringement liability. After remand, the District of Arizona concluded that Jack Daniel’s had not established trademark or trade dress infringement.
What did the Ninth Circuit decide about Bad Spaniels in 2026?
The Ninth Circuit held that Jack Daniel’s had not established federal dilution by tarnishment. It vacated the permanent injunction against Bad Spaniels and instructed the district court to enter judgment for VIP on the federal dilution claim.
Trademark Infringement
Trade Dress
Brand Dilution
Likelihood Of Confusion
Lanham Act
Marketing Research
Market Research
Branding
Advertising and Marketing
Wage And Hour Disputes, +4
Food and Beverage
Food And Beverage, +4
Food and Beverage