In the latest chapter of the long-running BAD SPANIELS case, the U.S. Court of Appeals for the Ninth Circuit has vacated the permanent injunction issued by the Arizona district court, based on dilution by tarnishment, and has remanded the case for entry of judment in favor of VIP Products. The appellate court ruled that "[t]he district court erred in concluding that JDPI met that burden and that [expert] Dr. Simonson’s testimony was sufficient to prove a likelihood of dilution beyond speculation." VIP Products, LLC v. Jack Daniel's' Properties, Inc., Appeal No. No. 25-2027 (9th Cir., August 4, 2026).
"To prove dilution of its mark by tarnishment, the plaintiff must establish that its mark is famous, the allegedly diluting mark is similar to the famous one, and the diluting mark creates a mental association with the famous mark likely to damage the famous mark’s reputation." The Ninth Circuit held that JDPI failed to carry its burden of proof.
Because VIP conceded similarity, the Ninth Circuit focused on the question of whether JDPI established a likelihood that “Bad Spaniels” and the toy’s trade dress harm the reputation of “Jack Daniel’s” and its registered trade dress (the only two marks that JDPI proved to be famous).
In evaluating whether the Bad Spaniels toy tarnishes “Jack Daniel’s,” the district court relied on the testimony of JDPI’s expert, Dr. Itamar Simonson. It concluded that “[b]ecause Jack Daniel’s produces a product intended for human consumption, association of Jack Daniel’s marks with something like dog feces is” not only tarnishing, but “particularly detrimental.”
The Ninth Circuit, however, concluded that Dr. Simonson’s analysis "ignored the effect of a 'humorous difference' on whether Bad Spaniels harms the reputation of JDPI’s famous marks."
To be sure, the district court credited Dr. Simonson’s conclusion that the first step of his dilution analysis was satisfied “because the point of VIP’s product was to bring Jack Daniel’s whiskey to mind”; that conclusion was based on VIP’s transparently parodic use. * * * Parody, however, is inherent in the Bad Spaniels product—indeed, as Dr. Simonson recognized, it was the “whole point.” Failing to consider the effect of VIP’s obvious parody on the likelihood of tarnishment was a critical misstep, and the district court erred in adopting the conclusions that followed.
The Ninth Circuit obvserved that, "to the extent Dr. Simonson’s testimony established any negative association, it was between some broad concept of defecation and consumption of food and drink products. Dr. Simonson acknowledged that he did not conduct a study on whether the Bad Spaniels dog toy itself creates harmful associations."
There is no evidence in the record from which a court could reasonably infer that scatological references made on a dog toy have the same likelihood of generating disgust as identical references on a consumable product meant for humans might. Dr. Simonson’s opinion to the contrary is pure conjecture.
Notably, the Ninth Circuit observed that "even where 'parody is not automatically a complete defense to a claim of dilution' because 'the defendant uses the parody as its own designation of source,' the TDRA “does not require a court to ignore the existence of a parody that is used as a trademark, and it does not preclude a court from considering parody as part of the circumstances to be considered for determining whether the plaintiff has made out a claim for dilution."
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TTABlogger comment: Long live parody! PS: If you put the word "spaniels" in the TTABlog search engine, you'll get a whole string of posts regarding this case. Will Jack Daniel's petition for certiorari? If it does, I think that dog won't hunt.
Text Copyright John L. Welch 2026.
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