June 12, 2023 – Unauthorized and infringing use of the trademarks, trade dress and brands of firearms industry members on items such as apparel, accessories and other merchandise is a widespread concern. Late last week, the Supreme Court issued a unanimous ruling overturning a previous decision by the Ninth Circuit Court of Appeals that, had it stood, would have severely limited the rights of trademark owners, including firearms brands, to protect their marks against such infringement and dilution.
The case pitted Jack Daniel’s against VIP Products, LLC, a company that makes dog toys, and centered around VIP’s sale of a particular toy designed to look like a bottle of Jack Daniel’s whiskey. The toy mimicked the label and iconic shape of a Jack Daniel’s whiskey bottle, but made certain changes on the label, such as calling it “Bad Spaniels” instead of Jack Daniels’ and replacing the Jack Daniel’s tagline “Old No. 7 Brand Tennessee Sour Mash Whiskey” with “The Old No. 2 On Your Tennessee Carpet,” among others. Jack Daniel’s began the scuffle by sending a cease-and-desist letter to VIP in 2014 and, when VIP refused to comply, the case eventually ended up in the courts.
Prior to reaching the Supreme Court, the Ninth Circuit Court of Appeals had upheld a lower court’s decision finding that because the dog toy was an “expressive work,” VIP’s use was protected under the First Amendment. The lower court also rejected Jack Daniel’s claim of trademark dilution, holding that VIP’s use was excused because it was a parody and thus “noncommercial.” With this decision, the Supreme Court overturned these rulings and sent the case back to the lower courts to conduct a traditional trademark infringement and dilution analysis and properly determine VIP’s potential liability.
The Supreme Court’s holding makes clear that when a trademark is used by an infringing party to identify that party as the source of their own goods, as VIP did in this case, First Amendment considerations do not shield that use from infringement analysis. This is because such uses squarely raise issues of potential consumer confusion, which the Supreme Court rightly described as the primary mission of trademark law. The Supreme Court further held that parody and non-commercial use does not automatically exempt a use from potential liability for trademark dilution when the alleged diluter uses a mark as a designation of the source for their own goods.
The Supreme Court’s decision does not guarantee that Jack Daniel’s will ultimately be successful in its lawsuit against VIP. What it does do, however, is provide better guidance to lower courts to ensure that the appropriate analysis is being conducted to determine whether a trademark owner’s rights are being infringed, and better define the circumstances under which alleged infringers can avoid liability under First Amendment, fair use and other shields. This is a positive development for firearms industry members who are negatively impacted by the use of their trademarks and trade dress on t-shirts and other apparel, signs, stickers, and other merchandise by infringers. This decision provides greater ammunition for trademark owners to use in enforcement efforts and will allow firearms industry members to better protect their brands.
Renzulli Law Firm, LLP will continue to monitor intellectual property related litigation and events around the country. If you have questions concerning intellectual property and brand protection, please contact John F. Renzullior Christopher Renzulli.
