By: Melissa D. Goolsarran Ramnauth, Esq. | Trademark Attorney
Image Source: Taftlaw.com
Jack Daniel’s and a dog toy company were recently involved in a trademark lawsuit. The dog toy company, VIP Products, filed suit against Jack Daniel’s in 2014 after it received a cease and desist letter for selling squeaky toys that looked like the Jack Daniel’s Old No. 7 Black Label Tennessee Whiskey.
A trademark is a word, phrase, symbol, or design, or a combination of these elements, that identifies and distinguishes the source of goods/services. Trademarks are essentially brand identifiers. Jack Daniel’s has several registered trademarks since it was established in 1866.
The district court initially ruled that the dog toys did infringe on Jack Daniel’s trademarks, and that the products were not an “expressive work.”
However, in March of 2020, the Ninth Circuit Court of Appeals reversed that ruling and held that the toys were “expressive works” that were protected by the First Amendment despite the use of similar trademarks. The appeals court did uphold the prior ruling that refused to cancel Jack Daniel’s trademark.
The Ninth Circuit relied on the standard set forth in Rogers v. Grimaldi: whether the mark was (1) “not artistically relevant to the underlying work” or (2) “explicitly mislead[ing] [to] consumers as to the source or content of the work.”
Jack Daniel’s appealed the Ninth Circuit’s ruling by petitioning the United State’s Supreme Court. On January 11, 2021, the petition was denied, leaving the Ninth Circuit ruling standing. The “Bad Spaniels Silly Squeaker” chew toy won.
This case highlights the importance of understanding trademark law on both sides. Jack Daniel’s was able to preserve its trademark and avoid cancellation, while VIP Products was able to continue selling its dog toys.
Research Assistance: Darshani Bacchus
Melissa D. Goolsarran Ramnauth, Esq. is a trademark and business attorney. She writes articles on trademark law. She also writes weekly articles on West Indian history and politics to raise awareness of the past, and educate the Caribbean diaspora on the need for legal contracts and trademarks.
She graduated magna cum laude from the University of Miami with a Bachelor of Arts degree in Political Science, a minor degree in History that focused on the slavery and indentured servitude eras, a minor degree in Criminology, and a Juris Doctor degree.
MDGR Law, P.A.