Posts Tagged: "dilution"

Jack Daniel’s Gets Last Laugh for Now in SCOTUS’ Ruling in ‘Bad Spaniels’ Case

The U.S. Supreme Court held today in Jack Daniel’s Properties v. VIP Products that the Rogers test, used to “protect First Amendment interests in the trademark context,” is not relevant “when an alleged infringer uses a trademark as a designation of source for the infringer’s own goods.” The Court therefore vacated the U.S. Court of Appeals for the Ninth Circuit’s ruling that said VIP’s dog toy mimicking a Jack Daniel’s whiskey bottle was an expressive work entitled to First Amendment protection. Justice Kagan authored the unanimous opinion for the Court, while Justice Sotomayor, joined by Justice Alito, and Justice Gorsuch, joined by Justices Thomas and Barrett, each filed concurring opinions.

Jack Daniel’s Tells SCOTUS Rogers Test is Unworkable, U.S. Brands’ Identities Are at Risk

Jack Daniel’s Properties, Inc. filed its reply brief with the U.S. Supreme Court on Friday, March 10, in a major trademark case set to be argued on March 22. The brief contends that the country’s most popular brands are at risk of losing their brand identity if the Court affirms the U.S. Court of Appeals for the Ninth Circuit’s view that a poop-themed dog toy mimicking Jack Daniel’s Whiskey bottle is an expressive work entitled to First Amendment protection. In November 2022, the Supreme Court granted Jack Daniel’s petition for a writ of certiorari, which seeks to clarify whether the First Amendment protects VIP Products, LLC’s humorous use of Jack Daniel’s trademarks for commercial purposes against claims of infringement and dilution.

Jack Daniel’s Will Get Its Shot at SCOTUS Review Against Dog Toy Maker

The U.S. Supreme Court yesterday granted a petition filed in August this year by Jack Daniel’s Properties, Inc. seeking clarification on whether the First Amendment protects VIP Products, LLC, a maker of dog toys that made humorous use of Jack Daniel’s trademarks for commercial purposes, against claims of infringement and dilution. The High Court previously denied Jack Daniel’s petition in January of 2021, and the U.S. Court of Appeals for the Ninth Circuit “summarily affirmed” the district court’s summary judgment ruling for VIP on remand. In its ruling in 2020, the Ninth Circuit said VIP’s dog toy mimicking a Jack Daniel’s whiskey bottle was an expressive work entitled to First Amendment protection, reversing the district court’s initial holding that the toy infringed and diluted Jack Daniel’s marks and remanding the case back to the district court for a determination on the merits of the infringement claim.

Spotify Successfully Opposes Two Marijuana-Related Trademark Applications

On January 11, the U.S. Patent and Trademark Office’s (USPTO’s) Trademark Trial and Appeal Board (TTAB) issued a precedential decision finding dilution by blurring and sustaining two oppositions filed by Spotify AB against two marijuana-related trademark applications. Applicant U.S. Software Inc. filed trademark applications for POTIFY in standard characters, and stylized with a design on July 17, 2017, and May 2, 2018, respectively. These applications sought to register POTIFY for: “downloadable software for use in searching, creating and making compilations, rankings, ratings, reviews, referrals and recommendations relating to medical marijuana dispensaries and doctor’s offices and displaying and sharing a user’s location and finding, locating, and interacting with other users and place, in International Class 9.”

Ninth Circuit Reverses Functionality and Fame Findings in Office Chair Trademark Case

On June 25, the U.S. Court of Appeals for the Ninth Circuit issued a decision in Blumenthal Distributing v. Herman Miller, Inc. in which the appellate court reversed some parts of a Central District of California ruling on trade dress and trademark infringement claims related to office chairs sold by Herman Miller, and affirmed others. The Ninth Circuit’s decision discusses at length the issue of functionality, an area of trademark law which is undefined by statute and is notable for overturning parts of the district court decision because of an erroneous jury instruction based upon the Ninth Circuit’s own model rules. The decision also includes a partial dissent by Circuit Judge Michelle Friedland on the issue of dilution, with Judge Friedland arguing that Herman Miller hadn’t proven the requisite fame to prevail on its trademark dilution claims.