It’s Hard for Parodic Products to Tarnish Famous Trademarks–Bad Spaniels v. Jack Daniel’s

The jurisprudence of parody dog toys and trademark dilution continues to grow. In this case, “JDPI argues that the Bad Spaniels toy dilutes its marks ‘by associating the famed whiskey with,’ as the Supreme Court put it, ‘dog excrement.'” However, “as JDPI concedes, the ‘Bad Spaniels’ mark ‘does not itself refer to defecation’ and therefore is not facially tarnishing.” On remand from the Supreme Court, the Ninth Circuit concluded again that the Bad Spaniels dog toy does not dilute Jack Daniel’s trademark. The panel defines the scope of dilution by tarnishment: “when conducting a tarnishment analysis, courts may only consider the dilutive effect of a junior mark that is similar to a corresponding famous mark.” This simple principle filters out a lot of Jack Daniel’s arguments: The only marks JDPI proved famous are “Jack Daniel’s” and its registered trade dress. All other senior marks, including “Old No. 7,” therefore drop out of our analysis…. “Old No. 7” cannot be famous under the TDRA…