not with a bang, but with a whimper of whipped dogs? VIP prevails in Ninth Circuit

VIP Prods., LLC v. Jack Daniel’s Properties, Inc., No. 25-2027 (9th Cir. Aug. 4, 2026)

VIP prevailed on remand on the confusion claim but lost on dilution by tarnishment. The court of appeals reversed, holding that JDI didn’t show that VIP’s parody dog toy product would tarnish the marks it proved were famous—the Jack Daniel’s name and overall trade dress (which seems to mean the bottle shape & general colors, not the print components thereof).

Although this was a fact question, the court of appeals can “correct errors of law, including . . . a finding of fact that is predicated on a misunderstanding of the governing rule of law.” Bose Corp. v. Consumers Union of U.S., Inc., 466 U.S. 485, 501 (1984).

The key error of law was to fail to disaggregate what JDI owned into famous and non-famous matter. Fame requires a “household name.” But the district court declined to “delineate between ‘Jack Daniel’s’ and ‘Old No. 7’ when finding that Jack Daniel’s trademarks are famous,” accepting JDI’s argument that “[a]ll of VIP’s Bad Spaniels marks associate all of Jack Daniel’s famous marks with poop, regardless of whether the marks themselves reference poop.” This erroneously lowered JDI’s burden. “The TDRA does not permit borrowing fame from one senior mark to establish the fame of another.” The district court didn’t conduct any separate analysis as to “Old No. 7,” and the record didn’t show that it was famous, so no tarnishment claim could rely on it.

The “Bad Spaniels” mark “does not itself refer to defecation” and therefore was not facially tarnishing. The court then concluded that dilution requires a “mark-to-mark” comparison, not a general comparison. “[C]ourts may not consider senior marks that are not famous or junior marks that are dissimilar when determining the likelihood of reputational harm to the senior mark.” Given that, JDI’s other senior marks, including “Old No. 7,” were irrelevant. As for  “43% POO BY VOL.” on the dog toy, “that phrase does not mimic or reproduce any famous, similar mark. The equivalent language on JDPI’s product, ‘40% ALC. BY VOL. (80 PROOF),’ is not a mark.”

The question was whether either famous mark was “portrayed in an unwholesome or unsavory context” that is likely to tarnish the reputation of the famous marks. The district court reasoned that “‘Bad Spaniels’ creates a negative association with Jack Daniel’s whiskey by associating whiskey with dog feces and is likely to tarnish Jack Daniel’s trademarks,” even though “ ‘Bad Spaniels’ as a trademark [for a chew toy] does not tarnish Jack Daniel’s.”

While “using a famous mark or a closely related depiction on a product that is of poor quality or pornographic or illegal may be tarnishing if the other requisites are met,” the proof here failed. JDI’s expert Dr. Simonson testified that there would be tarnishment based on the “Associative Network Model” supported by “numerous empirical studies.” But he didn’t conduct any studies on Bad Spaniels specifically. He first asked “whether the allegedly dilut[ing] product will bring or call to mind the allegedly diluted mark”; then “whether it has affected the brand equity and brand association of the allegedly diluted mark.”

Since the point of VIP’s product was to bring Jack Daniel’s whiskey to mind, the key was the second step; Simonson testified that it was satisfied by “conclusions that apply to all products and services regarding the impact of adding a negative association onto the association of the existing brand.” Specifically, “when food or beverage is associated with defecation, disgust is generated in the consumer’s mind with respect to that food or beverage.” Simonson acknowledged that “[n]o [consumer] would think that there’s poo in the Jack Daniel’s product” but that VIP nevertheless “created a mental association between Jack Daniel’s and poo, or Old No. 2, and therefore, for those people exposed to this product, [VIP] diluted or more specifically, tarnished the Jack Daniel’s whiskey.”

First, it was error to rely on “Old No. 2,” which wasn’t famous. Second, even including that reference, the testimony didn’t establish a harmful association between any such reference and JDPI’s two famous marks—“Jack Daniel’s” and its registered trade dress. Although Simonson opined that “it really doesn’t matter whether” poop-themed references are made “on this thing that looks very much like a Jack Daniel’s bottle, or any other product that creates an association between Jack Daniel’s and defecation,” but Bad Spaniels was “a parodic dog toy not intended for human consumption. 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.” There was no evidence that recognizing a negative message on one parody product would harm the reputation of the referenced product. Simonson’s reliance on the ANM “ignores that Bad Spaniels is an obvious parody. “ “[P]arody is a relevant factor in evaluating likelihood of dilution,” even if not dispositive (citing Haute Diggity Dog, Deere, and Hormel v. Jim Henson Prods. as well as the Timmy Holedigger case cited by the Supreme Court in JDI and Jordache v. Hogg Wyld).

The parody’s dual message impacts the dilution analysis because, “where a parody is successful and ‘not particularly subtle,’ it is a common-sense conclusion that consumers are more ‘likely to see [it] as the joke it was intended to be.’” It was error to disregard the parody in the context of tarnishment. “Dr. Simonson’s analysis ignored the effect of a ‘humorous difference’ on whether Bad Spaniels harms the reputation of JDPI’s famous marks” (emphasis added).  Although survey or expert testimony isn’t required, JDI here rested its case on expert testimony, which was insufficient here.