In an interview with MLex, Knobbe Martens partner Greg Phillips discussed the impact of a recent ruling from the U.S. Court of Appeals for the Ninth Circuit regarding trademark dilution, the latest development in a decade-long trademark dispute between Jack Daniel’s and VIP Products. The dispute centers on VIP’s “Bad Spaniels” dog toy, a parody of Jack Daniel’s iconic whiskey bottle that the company alleged diluted and tarnished its trademarks.
Phillips, who co-chairs Knobbe Martens’ Trademark and Brand Protection practice, emphasized that brand owners appealing trademark dilution claims in the Ninth Circuit will need to update their litigation strategy to focus on evidence that demonstrates reputational harm. Speaking to the reach of the Ninth Circuit’s decision, he noted that the ruling will apply to trademark dilution proceedings in a number of western states in the appeals court’s jurisdiction, including California and Arizona. However, since the Trademark Trial and Appeal Board (TTAB) is not within the Ninth Circuit’s purview, it is unlikely that the board will adopt this ruling in its proceedings, he maintained.
Speaking to the latitude offered under federal dilution law to parties seeking to parody a popular brand, Phillips suggested that this decision might cause such parties to feel “a little more comfortable with it, as long as people get the joke.”
Read the full article, “Jack Daniel’s Parody Ruling Raises Trademark Tarnishment Bar in Ninth Circuit,” in MLex [subscription required].
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