Ninth Circuit Sets High Bar for Trademark Tarnishment Claims
Reversing a lower court in the long-running 'Bad Spaniels' dispute, the appellate court ruled that an offensive association alone is not enough to prove dilution and that brand owners must show a likelihood of actual reputational harm.
In the long-running dispute between Jack Daniel’s and the maker of the 'Bad Spaniels' dog toy, the Ninth Circuit has handed a significant victory to the parody product maker, VIP Products. The appellate court vacated a permanent injunction and directed entry of judgment for VIP on the distiller's trademark dilution-by-tarnishment claim. The decision, which follows a 2023 U.S. Supreme Court ruling in the same case, clarifies the standard for proving tarnishment. Sophisticated brand owners and their counsel should note the court's holding that an offensive or scatological association with a famous mark is not, by itself, sufficient evidence of tarnishment. Instead, the plaintiff must prove that the association is likely to actually harm the mark's reputation. Jack Daniel's expert testimony on general consumer attitudes was deemed insufficient. The ruling confirms that while parody is not a categorical defense when used as a source identifier, its nature as an obvious joke remains highly relevant to whether consumers are likely to think less of the original brand. Brand owners must now consider developing more specific evidence of reputational harm, such as targeted surveys, before pursuing similar claims.