Ninth Circuit Report

• Jurisdiction: United States,Federal
• Citation: Vol. 46 No. 3
• Publication year: 2021
• Author: Anne-Marie Dao
• topic: Trademark,Intellectual Property

NINTH CIRCUIT REPORT

Anne-Marie Dao

Troutman Sanders LLP

Happy Fall, Ninth Circuit report readers! This issue covers an interesting Trademark case that was appealed to the U.S. Supreme Court. The Supreme Court denied certiorari, but the Ninth Circuit's decision is worth discussing and likely of particular interest to brand owners and those looking to parody brands.

BRIEF BACKGROUND

If you have a dog, you've likely seen the squeaky toys that are shaped similarly to alcohol bottles. I've seen ones that look like wine glasses, beer bottles, and apparently VIP Products LLC ("VIP Products") made a squeaky toy resembling JACK DANIEL'S® Tennessee whiskey. The dog toy at issue in this case was "Bad Spaniels," which according to Jack Daniel's Properties, Inc. ("Jack Daniels"), "copies the distinctive square bottle and black-and-white labelling of JACK DANIEL'S® Tennessee whiskey:"¹

Bad Spaniels were introduced in 2014, selling through retailers such as Walmart and Amazon. Jack Daniel's asked VIP Products to stop selling the toy. VIP Products' response was to sue Jack Daniel's, seeking a declaratory judgment that Bad Spaniels did not infringe or dilute any of Jack Daniels' trademark rights.² Jack Daniels responded by filing federal and state-law counterclaims for infringement and dilution by tarnishment of its marks and trade dress.

THE DISTRICT COURT

The district court "ruled as a matter of law that Jack Daniel's established the first two elements of its infringement claims—i.e.,the distinctiveness and nonfunctionality of its trademarks and trade dress."³ It also held that there were triable issues of fact as to the remaining element of Jack...