Ninth Circuit Tightens Tarnishment Standard in Bad Spaniels Case
Trademark owners must now prove likely reputational harm—not just an offensive association—to win dilution-by-tarnishment claims involving parodic products.
The Ninth Circuit vacated a permanent injunction against VIP Products’ Bad Spaniels dog toy and ruled for VIP on Jack Daniel’s dilution-by-tarnishment claim. The court held that an offensive or scatological association with a famous mark is insufficient; plaintiffs must show the association is likely to harm the mark’s reputation. The decision also requires fame to be proven mark by mark, rejecting the assumption that a house mark’s fame extends to taglines or packaging elements. While parody is no longer an automatic defense when the accused use functions as a trademark, the court found that an obvious joke can reduce the likelihood of reputational injury. The ruling raises the evidentiary bar for tarnishment claims and gives accused parody users a stronger defense if consumers understand the use as humor rather than a source identifier.