December 19, 2022 – There are countless examples of apparel, accessories, and other merchandise that unlawfully use the trademarks, logos, and brands of firearms manufacturers popular within the industry.  Trademarks are powerful tools for consumer and brand protection, but trademark rights do not trump the First Amendment.  When an individual uses another’s trademark in an artistic or expressive way, it is generally protected as free speech and it is immune from claims of trademark infringement.  Jack Daniel’s is currently at the forefront of trying to limit these broad First Amendment protections for “satirical” products.

Jack Daniel’s and VIP Products LLC, a maker of dog toys, are involved in a trademark infringement case that will be heard by the Supreme Court early next year. VIP Products markets and sells dog toys that capitalize on the brand recognition of famous companies such as Jack Daniel’s.  Beginning in 2014, Jack Daniel’s sent a cease-and-desist letter to VIP concerning trademark infringement for its “Bad Spaniels” dog toy, which plays off the Jack Daniel’s bottle and brand.  The VIP dog toy replicates the design of the Jack Daniel’s bottle, complete with labels stating, “The Old No. 2 on Your Tennessee Carpet” and “43% Poo By Vol.”  

When VIP refused to comply with Jack Daniel’s request, the trademark infringement dispute moved to the courtroom and proceeded to trial, where Jack Daniel’s argued that simply claiming that the use of another’s trademark is satirical does not allow an individual to sell products that clearly exploit the reputation and goodwill built by a trademark owner.  The district court found that VIP’s use of the Jack Daniel’s trademarks to sell poop-themed dog toys was likely to confuse consumers, infringed the Jack Daniel’s trademarks, and damaged the Jack Daniel’s brand reputation. On appeal, however, the Ninth Circuit held that VIP’s First Amendment interest in using the Jack Daniel’s trademarks as its own marks on funny dog toys conferred special protection from infringement claims and rendered VIP’s commercial dog toys “noncommercial” and thus exempt from infringement claims.  The Ninth Circuit decision has been criticized by brand owners and intellectual property attorneys, including the International Trademark Association (INTA). 

Depending on how the Supreme Court rules, the decision may significantly enhance trademark rights and protection for brand owners in other sectors.  Similar examples of unlicensed merchandise that avoid trademark infringement exist within the firearms industry.  Unauthorized products such as ornaments, stickers, signs, and humorous t-shirts, which make fair use of firearms manufacturers’ trademarks and brands, may be protected by the First Amendment or copyright laws.  However, if the Supreme Court decides in Jack Daniel’s favor, these fair use exceptions may no longer be sufficient to protect individuals from claims of trademark infringement.  Such a ruling would prevent trademark infringers from copying famous firearm brands but avoiding penalty simply by adding an expressive or humorous twist to their goods.  In turn, this should allow firearms companies to better protect their brand’s image and reputation by ensuring that any products which might be associated with the company are licensed, manufactured, advertised, and sold in a responsible manner.

The Intellectual Property team at Renzulli Law Firm is experienced with all aspects of trademarks in the firearms industry, from registration to enforcement and litigation.  We are ready to answer any questions you may have or provide advice on strengthening your brand and intellectual property portfolio.

Renzulli Law Firm, LLP will continue to monitor intellectual property related litigation and events around the country.  If you have any questions concerning intellectual property or related litigation, please contact John F. Renzulli or Christopher Renzulli.