The Ninth Circuit vacated Jack Daniel’s federal trademark-dilution judgment against dog-toy maker VIP Products on August 4. The court also set aside the permanent injunction and ordered the trial court to enter judgment for VIP on that claim.
Key Facts
- Federal appellate ruling: The published opinion was filed August 4, 2026, in Ninth Circuit case No. 25-2027.
- Immediate effect: The panel vacated the injunction and directed the trial court to enter judgment for VIP on Jack Daniel’s federal dilution claim.
- Limited holding: The panel did not invalidate the federal dilution law or decide VIP’s constitutional challenge.
Why Jack Daniel’s lost this appeal
Trademark dilution by tarnishment concerns an association likely to harm the reputation of a famous mark. The trademark owner bears the burden of proving fame, similarity and likely reputational harm.
The panel found that Jack Daniel’s proved fame for its name and registered trade dress. Trade dress means a product’s distinctive overall appearance or packaging.
The record did not separately establish that “Old No. 7” was famous, the court ruled. That left “Bad Spaniels” and the toy’s trade dress as the corresponding marks for the tarnishment analysis.
Jack Daniel’s argued that the poop-themed toy associated its whiskey marks with dog excrement. VIP countered that Jack Daniel’s had not proved the elements of dilution by tarnishment.
The panel concluded that similarity alone was insufficient. It found no adequate evidence that the relevant associations were likely to damage the reputation of the two famous marks.
The court also said the expert analysis was too speculative. The analysis did not study whether this dog toy created harmful associations and did not account for its obvious parody, the opinion said.
What the decision does not decide
The decision does not make parody categorically immune from trademark-dilution claims. The panel said parody may inform the factual analysis even when it is used to identify a product’s source.
The court did not decide VIP’s challenge to the constitutionality of the federal tarnishment provision. The United States had intervened to defend the law, but the panel resolved the appeal on the evidence.
The ruling also did not newly decide trademark infringement. The trial court had separately ruled for VIP after finding that Jack Daniel’s did not prove likely consumer confusion.
How the case returned to the Ninth Circuit
Jack Daniel’s and VIP have litigated over the Bad Spaniels toy for more than a decade. VIP sought a declaration that the toy did not infringe or dilute Jack Daniel’s marks, and Jack Daniel’s filed counterclaims.
The Supreme Court addressed the case in 2023. It held that a special threshold test for expressive works does not apply when the challenged marks identify the source of the accused product.
The Supreme Court did not decide whether Jack Daniel’s ultimately proved infringement or dilution. It returned those questions for ordinary trademark analysis.
After further proceedings, the trial court ruled for VIP on infringement but for Jack Daniel’s on dilution by tarnishment. It entered the injunction that the Ninth Circuit has now vacated.
What happens next
The Ninth Circuit directed the trial court to enter judgment for VIP on the federal dilution claim. The published panel opinion does not itself foreclose a request for rehearing or possible Supreme Court review.
