THE RATIO. One judgment, decoded twice: once for anyone, once for the profession.

Case Details

  • Citation: No. 25-2027 (9th Cir. Aug. 4, 2026); D. Ariz. No. 2:14-cv-02057-SMM
  • Court: United States Court of Appeals for the Ninth Circuit, on appeal from the District of Arizona (Judge Stephen M. McNamee)
  • Decided: August 4, 2026 (argued and submitted May 20, 2026, Phoenix, Arizona)
  • On appeal from: a 2025 order on the parties’ cross motions for judgment, entered after an earlier Ninth Circuit merits decision and a Supreme Court remand
  • Counsel: Bennett E. Cooper, Dickinson Wright PLLC, for VIP Products; Matthew B. Nicholson and Lisa S. Blatt, Williams & Connolly LLP, for Jack Daniel’s; Steven H. Hazel, US Department of Justice, for the United States as intervenor
  • Governing provision: Federal Trademark Dilution Act as amended by the Trademark Dilution Revision Act, 15 U.S.C. Section 1125(c)
  • Key precedents applied: Jack Daniel’s Props., Inc. v. VIP Prods., LLC, 599 U.S. 140 (2023); Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003); Fruit of the Loom, Inc. v. Girouard, 994 F.2d 1359 (9th Cir. 1993); Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009); Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007); Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497 (2d Cir. 1996)
  • Key pages: pp. 13 to 19 cover the fame analysis, pp. 19 to 28 cover tarnishment and parody. This opinion runs by page rather than numbered paragraph.

Headnote

Jack Daniel’s and a squeaky dog toy called Bad Spaniels have been arguing about trademark law for over a decade. In this latest round, the Ninth Circuit sided with the toy. The court found that Jack Daniel’s had only proven fame for its own name and bottle design, not for every mark connected to it, and that its expert offered no evidence tying Bad Spaniels specifically to reputational harm. Because the toy is an obvious parody, and Jack Daniel’s evidence never accounted for that, the tarnishment claim failed. The court lifted the injunction and ordered the trial court to enter judgment for VIP Products instead.

Factual Background

Jack Daniel’s Properties, Inc. (JDPI) has held a trademark in the name “Jack Daniel’s” since 1875 and in “Old No. 7” since 1904, along with the square whiskey bottle, its label, an arched logo, and filigree detailing. VIP Products makes a line of parody chew toys shaped like well known drink bottles. In 2014 it added “Bad Spaniels” to that lineup: a toy shaped like the Jack Daniel’s bottle, relabeled with a cartoon spaniel, “Old No. 2 On Your Tennessee Carpet” in place of the whiskey’s usual wording, “43% POO BY VOL.” where alcohol content normally appears, “100% SMELLY,” and a disclaimer on the back stating the toy has no connection to the distillery.

JDPI demanded VIP stop selling the toy. VIP sued first, seeking a declaration that Bad Spaniels neither infringed nor diluted JDPI’s marks, and JDPI counterclaimed for infringement and dilution under the Lanham Act. After a four day bench trial in 2017, the district court found both infringement and tarnishment and entered a permanent injunction against VIP in 2018. On VIP’s appeal, the Ninth Circuit reversed on dilution and vacated on infringement in 2020, holding that Bad Spaniels used Jack Daniel’s trade dress to convey a humorous message protected by the First Amendment. On remand, the district court then ruled for VIP on both claims, a result the Ninth Circuit summarily affirmed at the parties’ joint request.

Jack Daniel’s took the case to the Supreme Court, which held in 2023 that VIP could not rely on First Amendment defenses built for expressive works, because VIP used the Bad Spaniels marks as its own source identifying trademarks rather than as pure commentary. The Court sent the case back for the lower courts to apply ordinary trademark analysis instead. Once the case returned to the Ninth Circuit and then the district court, the parties agreed the existing trial record was sufficient to resolve what remained. In 2025 the district court found VIP liable for dilution by tarnishment, though it now found no likelihood of confusion sufficient for infringement, and entered a permanent injunction against VIP on the tarnishment finding alone. VIP appealed that injunction, producing the decision addressed here.

The Question for Determination

In plain terms: can a famous brand stop a parody product just by showing, in general terms, that jokes about bodily waste make people feel disgust, or does it have to show that this particular joke, aimed at this particular trademark, actually put the brand’s reputation at risk?

Framed precisely, the question was whether JDPI carried its burden under the TDRA, 15 U.S.C. Section 1125(c), to prove a likelihood of dilution by tarnishment. That required proof that each senior mark relied upon was independently famous, that VIP’s corresponding junior marks were similar to it, and that VIP’s use created a mental association likely to damage the famous mark’s reputation, assessed against the fact that Bad Spaniels does not literally reference defecation and is an admitted parody.

The Court’s Reasoning

The panel began with the statutory structure. Congress created a federal dilution cause of action in 1996 and revised it in 2006 specifically to overturn the Supreme Court’s earlier requirement of proof of actual harm, replacing it with a likelihood standard. Tarnishment under the TDRA means an association between marks that harms the famous mark’s reputation, available regardless of confusion, competition, or proven economic loss. The plaintiff bears the burden on every element: fame, similarity, and the likelihood of reputational harm.

On fame, the court found the district court’s approach flawed. Rather than assessing “Jack Daniel’s,” “Old No. 7,” and the trade dress as separate marks, the district court had treated the whole family as famous once it found the flagship name famous. The Ninth Circuit rejected that shortcut. Fame under the TDRA cannot be borrowed from one mark to prop up another, so the record, extensive as it was on advertising spend, sales figures, longevity of use, and consumer recognition, supported fame only for the “Jack Daniel’s” word mark and its registered trade dress. “Old No. 7” dropped out of the case for want of any independent fame finding, taking “Old No. 2” out of the tarnishment analysis with it.

That left only “Bad Spaniels” and the toy’s trade dress as the junior marks in play, and VIP did not dispute that these were similar to JDPI’s marks. Because neither junior mark facially referenced defecation, the panel asked whether either was used in an unwholesome or unsavory context likely to cause reputational harm. JDPI’s case on this point rested entirely on its expert, Dr. Itamar Simonson, and his Associative Network Model, built from generic consumer psychology research on disgust rather than any study of Bad Spaniels itself. The panel found this insufficient on two independent grounds. Part of Simonson’s testimony concerned “Old No. 2,” now irrelevant once “Old No. 7” fell out of the case. His broader claim, that pairing any food or drink brand with defecation generates equivalent disgust regardless of what product carries the joke, was, in the panel’s words, “pure conjecture” once applied to a dog toy rather than something meant for human consumption.

The panel’s sharpest criticism concerned parody. Simonson’s model never accounted for the fact that Bad Spaniels is an obvious, self aware joke, something the district court had already recognized in its own infringement analysis. Drawing on decisions from the Second, Fourth, and Tenth Circuits, the panel held that while a successful parody used as a trademark does not automatically defeat a dilution claim, courts may and should weigh how clearly a product signals its own joke when assessing whether consumers are likely to associate it with genuine reputational harm. A parody carries two messages at once, that it echoes the original and that it plainly is not the original. Ignoring that dual message, and its effect on how consumers actually process the association, was what the panel called the “critical misstep” in the district court’s reasoning.

Having found JDPI’s evidence insufficient on both fame and reputational harm, the panel vacated the injunction and remanded for entry of judgment in VIP’s favor. It expressly declined to reach VIP’s separate argument that the TDRA’s tarnishment provision is facially unconstitutional, since the dilution ruling made that question unnecessary to decide.

Critical Assessment

The insistence on mark by mark fame analysis is the most doctrinally significant part of this opinion, and it holds up well. Businesses with large trademark portfolios have an obvious incentive to let a flagship mark’s fame carry weaker, related marks along with it, and the panel closed that route by requiring the same statutory factors to be applied to each mark separately. This keeps the TDRA’s demanding fame threshold meaningful rather than something a plaintiff can satisfy once and then stretch across an entire brand family.

The court is on equally solid ground in rejecting expert testimony that was never tailored to the product actually at issue. A likelihood standard still requires evidence connecting theory to fact, and generic psychology research about disgust, divorced from any assessment of Bad Spaniels or of parody’s effect on consumer perception, was always going to struggle to clear that bar. Treating that gap as fatal, rather than deferring to the trial court’s credibility findings, is a defensible reading of what “likelihood” requires.

The reasoning is thinner on how much interpretive weight now rests on a parody being obvious or successful. The panel imports that framing from sister circuit decisions without offering much guidance on how obvious is obvious enough, leaving future litigants to argue over a threshold that is more a matter of impression than a rule. A parody that is only mildly self evident, or one aimed at a mark whose humor is genuinely disputed, will sit in a gray zone this opinion does not clearly resolve.

It is also worth registering the practical asymmetry running under four rounds of appellate litigation and one trip to the Supreme Court. A toy manufacturer has spent more than a decade, and the cost of Supreme Court litigation, establishing that a novelty dog toy does not tarnish a spirits brand with a near universal recognition rate. Whatever the doctrinal merits, that duration and cost function as a deterrent independent of legal outcome, a dynamic the opinion does not address and was not asked to.

Implications

If you’re not a lawyer: Bad Spaniels can keep being sold. More broadly, this case confirms that a famous company cannot shut down every joke or unflattering association tied to its brand simply by disliking the comparison. To win a dilution claim, a business must show real, specific evidence that a particular product risks damaging its reputation, not just that the comparison is undignified. Parody is not an automatic shield, since VIP still had to win this fight through a full trial and a decade of appeals, but an obvious, clearly signposted joke now carries real weight in a court’s analysis rather than being brushed aside.

For the profession: Counsel building or defending TDRA tarnishment claims in the Ninth Circuit should expect fame to be litigated mark by mark, with no shortcut through a portfolio’s aggregate reputation, and should retain experts whose methodology is tied to the accused product itself rather than to generalized branding psychology. Defense counsel in parody cases now have clear appellate authority, aligned with the Second, Fourth, and Tenth Circuits, for building the obviousness of a parody directly into rebuttal expert methodology rather than treating it as a purely legal argument. The panel’s refusal to reach VIP’s facial challenge to the TDRA’s tarnishment provision leaves that question open for a case with a cleaner procedural posture, worth watching given that the federal government has already shown it will intervene to defend the statute.