Could a dog toy tarnish Jack Daniel's image? Supreme Court will hear the case

Alexandra Hardle
Arizona Republic
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A bottle of Jack Daniel's Tennessee Whiskey is displayed next to a Bad Spaniels dog toy in Arlington, Va., on Nov. 20, 2022. Jack Daniel's has asked the Supreme Court justices to hear its case against the manufacturer of the toy.

A conflict between a popular whiskey distiller's bottle and an Arizona company with a similar-looking dog toy is going to the U.S. Supreme Court.

Jack Daniel's says the dog toy's resemblance to its bottle might cause consumer confusion or tarnish the brand's reputation, although the court will ultimately make the final decision.

VIP Products, a Phoenix-based dog toy company with a distribution center in Goodyear, has toys resembling everyone's favorite adult beverages: the Bad Spaniels toy might look like a Jack Daniel's bottle of whiskey, while the Heinie Sniff'n toy looks a bit like a bottle of Heineken beer.

Jack Daniel's first asked VIP Products to stop selling the Bad Spaniels toy — which is garnished with jokes such as "the old No. 2 on your Tennessee carpet" — after VIP Products began selling the toy in 2013. After VIP Products refused to stop selling the toy, the company filed a claim stating that the Bad Spaniels toy does not infringe on any trademark rights.

Jack Daniel's responded to the filing by claiming that the toy does infringe upon its trademark and trade dress.

In a 2015 Arizona district court filing, the shape of the product, white letters over a black background and the font were described as similarities between the two products.

VIP Products then added two additional claims to the filing. One stated that the shape of the Jack Daniel's whiskey bottle is not distinctive, asking for a declaration that the design not be entitled to trademark protection. The second added claim asked the court to cancel Jack Daniel's trademark claim for its square bottle.

Although the toy has a tag disclaiming that it is not affiliated with Jack Daniel's, that might not be enough, said David Franklyn, a professor and executive director of the McCarthy Institute at Arizona State University's Sandra Day O’Connor College of Law. 

"It depends on whether people see them, are likely to absorb them, understand what they mean," Franklyn said.

So while the disclaimer is a good idea, it won't automatically give VIP Products a defense in court.

A bottle of Jack Daniel's Tennessee Whiskey is displayed next to a Bad Spaniels dog toy in Arlington, Va., on Nov. 20, 2022. Jack Daniel's has asked the Supreme Court justices to hear its case against the manufacturer of the toy.

The likelihood of consumer confusion will also come into play, said Franklyn, meaning whether people will think the toy is officially licensed by Jack Daniel's. If the likelihood of consumer confusion is relatively high, the company can sometimes prove an overriding speech interest to continue selling the product.

Ultimately, Franklyn said the Supreme Court most likely took the case because it believes trademark law could use further clarification. But it's still possible for the case to be turned around and sent back to the original board for reconsideration in light of the new legal standard.

The struggle will be balancing two competing interests: the right to have a brand owner have exclusive control over its brand versus the right of consumers to be free from confusion in the marketplace. If consumers truly do think the toy is a Jack Daniel's product, it is possible that the perception of the brand would be diminished, Franklyn said.

In the Court of Appeals for the Ninth Circuit, the court ruled in favor of VIP Products when it came to dilution. Using the bottle's design to convey a humorous message is protected by the First Amendment, according to the ruling.

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The dilution argument can only be used by nationally famous brands, said Franklyn. In order to win, Jack Daniel's would have to prove that there is a likelihood that, if VIP Products were to continue selling the Bad Spaniels toy, it would dilute the strength of Jack Daniel's trademark.

In its request for the Supreme Court to review the case, Jack Daniel's questioned whether VIP Products should have heightened First Amendment protections because the use of the Jack Daniel's trademark was humorous.

VIP Products filing in response asked that the request be denied. That filing asks whether the Trademark Dilution Revision Act’s statutory exception for “noncommercial use” applies to a parody of a Jack Daniel's bottle of whiskey. The Ninth Circuit court stated that although VIP Products was selling a product, it did not constitute a commercial one because the message conveyed was humorous.

"The Ninth Circuit bizarrely held that VIP’s poop humor rendered its commercial use of Jack Daniel’s trademarks as VIP’s own marks 'noncommercial' and thus immune from dilution liability under a separate, more general exclusion," reads the filing submitted by Jack Daniel's.

In Jack Daniel's reply, the company states that seeing a whiskey bottle-shaped dog toy may make children more inclined to drink Jack Daniel's when they see a bottle.

"But children need not drink whiskey to know that they enjoy playing with dog toys using Jack Daniel’s marks," reads the filing.

Lawyers for Jack Daniel's and VIP Products did not respond to The Arizona Republic's requests for comment.

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