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Apr. 20, 2022

When trademark, whiskey, and chew toys meet

See more on When trademark, whiskey, and chew toys meet

James R. Molen

Greenberg Glusker Fields Claman & Machtinger LLP

2049 Century Park East, Suite 2600
Los Angeles , CA 90067


2 on your Tennessee Carpet” and “100% smelly.

Unimpressed, Jack Daniel’s demanded that VIP cease and desist from manufacturing its Bad Spaniels product. VIP refused and filed an action for declaratory relief. Jack Daniel’s counterclaimed for, among other things, trademark infringement.

Jack Daniel’s was initially met with success in the district court, which found in its favor, denying VIP heightened First Amendment protection because the toy “is not an expressive work.” In so holding, the district court explicitly declined to apply the Rogers test, as it only extended to works of artistic expression, such as movies, plays, books, and songs, and “requires courts to construe trademark law only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.”

VIP subsequently appealed to the Ninth Circuit, which reversed. As the panel explained “although surely not the equivalent of the Mona Lisa,” Bad Spaniels is an expressive work because it “communicates a ‘humorous message”’ and was not “rendered non-expressive simply because it is sold commercially”—thus harkening back to its prior decision in Gordon v. Drape Creative. Accordingly, rather than apply the likelihood-of-confusion factors used in traditional trademark analysis, the Court turned to the Rogers test, which required Jack Daniel’s to show that VIP’s use of its mark was either “not artistically relevant to the underlying work” or “explicitly misleads consumers as to the source or content of the work.” The Ninth Circuit thus vacated the district court’s finding of infringement and remanded to the district court for further proceedings consistent with its decision.

Not to be outdone, in September 2020, Jack Daniel’s filed a petition for certiorari to the United States Supreme Court. VIP opposed, and the Supreme Court recently denied the petition without comment, leaving the decision as the law of the Ninth Circuit. This sets up not only a tougher legal climate for brand owners, but also a jurisdictional split in cases involving trademark infringement implicating First Amendment concerns.

What does this mean for trademark holders? Ultimately, it comes down to a choice of jurisdiction, as the law of the circuit could have significant consequences for a brand owner’s likelihood of success in seeking to enforce its rights when there are First Amendment implications. As it stands, the Ninth Circuit now applies an expansive interpretation of Rogers, such that to succeed on an infringement claim involving expressive works (which apparently includes chew toys), a brand owner must prove the defendant’s use of the mark is either “not artistically relevant” or “explicitly” misleads customers. Moreover, the Ninth Circuit treats the explicitly misleading inquiry as a threshold requirement that is separate and apart from the likelihood of confusion test. Thus, for a use to be explicitly misleading, the Ninth Circuit requires that there be “an ‘explicit indication,’ ‘overt claim,’ or ‘explicit misstatement.’”

Meanwhile, the Second Circuit applies a more restrictive test, viewing the likelihood of confusion analysis as being integrated into the second prong of the Rogers test and allowing evidence of actual consumer to overcome First Amendment interests in expressive speech.

Although Rogers remains binding precedent only for the Second Circuit, various other circuits have adopted its balancing test, albeit inconsistently. Some, like the Fifth Circuit, have largely adopted the Second Circuit’s methodology, while others, like the Third, Sixth, and Eleventh Circuits have adopted the Ninth Circuit’s approach and do not consider likelihood-of-confusion factors. Still others, like Tenth Circuit, have yet to apply the Rogers test at all. All of which naturally leads to quite a bit of confusion—which, perhaps ironically, is the very thing trademark law is designed to protect against.

While it remains to be seen where this jurisdictional split will shake out—with many commentators calling for a uniform test to assess free speech protections within the context of trademark infringement—one thing remains certain for brand owners seeking to enforce their rights: Be sure to watch where you step.

Molen is a partner at Greenberg Glusker Fields Claman & Machtinger LLP.


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