On June 8, 2023, the Supreme Court of the United States issued a unanimous decision in the case of Jack Daniel’s Properties, Inc. v. VIP Products LLC, No. 22-148, 599 U.S. ___ (2023), ruling that when an alleged infringer uses a mark as a trademark to designate the source of its own goods, the Rogers test providing First Amendment protection for titles of artistic works does not apply to shield the challenged use from liability for trademark infringement, nor do the noncommercial use and fair use exclusions under the Lanham Act apply to foreclose dilution liability.
Jack Daniel’s makes and sells whiskey using the bottle design and label shown below, which are trademarks of Jack Daniel’s and are covered by several trademark registrations, including “Jack Daniel’s,” “Old No. 7,” the arched Jack Daniel’s logo, the stylized label with filigree (twirling white lines) and the distinctive square bottle design. VIP Products is a dog toy company that makes a line of chewable rubber toys called “Silly Squeakers,” many of which are designed to look like and parody popular beverage brands. Jack Daniel’s found no humor when VIP Products added the “Bad Spaniels” toy to its line (shown below), which is about the same size and shape as a bottle of Jack Daniel’s whiskey and uses the words “Bad Spaniels” in place of “Jack Daniel’s” in a similar font and arch, uses a similar black label and filigreed border, replaces “Old No. 7 Tennessee Sour Mash Whiskey” with “The Old No. 2 On Your Tennessee Carpet” and substitutes “43% poo by vol.” and “100% smelly” for “40% alc. by vol. (80 proof).” VIP’s Bad Spaniels product is packaged for sale with a hangtag (shown below) bearing two logos, one for Silly Squeakers and one for Bad Spaniels, and includes a disclaimer that the product is not affiliated with Jack Daniel Distillery.
Before a business begins to use or files to register a trademark, it should research if other businesses are using the same mark for the same services, or if any have in the past. It should also do the same for any related, or similar marks for similar goods or services. This sort of search is designed to find federal trademark registrations, pending applications for federal registration, and common law (unregistered) trademarks that are in current use.
Such search should be conducted and reviewed by an experienced trademark attorney who can determine whether your proposed mark is, or may be considered, confusingly similar to a preexisting mark and can assess the risks associated with such finding. For example, if your proposed mark is confusingly similar to a preexisting mark, you face the risk of receiving a cease-and-desist letter or trademark infringement claim from the prior mark owner. You could also lose the investment and goodwill in your mark and spend considerable sums to re-brand your business if forced to cease usage.
Additionally, you will not be able to federally register your mark if it is confusingly similar to a mark covered by a prior federal registration or a prior-filed pending application. A trademark attorney can also advise whether your mark is distinctive (and thus capable of federal registration) or whether it is too descriptive to qualify for registration because the mark describes some feature, characteristic, function or purpose of the products or services to be provided under the mark.
Registration is not necessary to acquire trademark rights, but it provides important benefits. United States federal law recognizes both common law trademarks and marks that are registered with the United States Patent and Trademark Office. This post provides an overview of some of the benefits of registering a mark.
Copyright protects original works of authorship fixed in a tangible medium of expression. 17 U.S.C. §102(a). “Originality” and “authorship” require independent creation and a modicum (i.e. minimal level) of creativity. “Fixation” requires that a work be fixed in a tangible format in which it can be perceived, reproduced or communicated, either directly or with the aid of a machine or device — for example, a writing, recording, photo or video. Continue reading
It is hard to imagine a business that does not own or use an asset subject to copyright protection. Copyright protection extends to eight non-exclusive classes of works: literary works; musical works; dramatic works; pantomimes and choreographic works; pictorial, graphic and sculptural works; motion pictures and other audiovisual works; sound recordings; and architectural works. 17 U.S.C. §102(a). Continue reading
Copyrights and patents expire after a fixed term, but trademark rights will continue in perpetuity as long as a mark remains in use. Trademark rights are a “use it or lose it” proposition—if the marks are abandoned, the rights will be lost.