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| 1 minute read

Jack Daniels Fetch'd a Win in SCOTUS Dog Toy Case

Alcohol brand Jack Daniels won at the U.S. Supreme Court this summer against a dog toy manufacturer who created novelty dog toys similar to bottles of Jack Daniels whiskey (see photo).  The issue the high court ruled on was very narrow: whether the First Amendment Rogers test applies here or if Jack Daniels is entitled to a trial to determine if the dog toy confuses consumers as to whether the dog toy is produced by Jack Daniels or is sponsored by or otherwise connected to the whiskey brand. The unanimous majority opinion was written by Justice Kagan, who remanded the case back down to the lower courts after determining the Rogers test doesn't apply and this case is one that will turn on consumer confusion.  

Kagan writes: "Today’s opinion is narrow. We do not decide whether the Rogers test is ever appropriate, or how far the ‘noncommercial use’ exclusion goes...The use of a mark does not count as noncommercial just because it parodies, or otherwise comments on, another’s products. We hold only that it is not appropriate when the accused infringer has used a trademark to designate the source of its own goods – in other words, has used a trademark as a trademark. That kind of use falls within the heartland of trademark law, and does not receive special First Amendment protection."

In summary, when another party uses a trademark in a humorous way, the often used Rogers test does not apply and instead the typical consumer confusion test applies.  

The Supreme Court has issued its opinion in a trademark lawsuit that pitted Jack Daniel’s against the maker of squeaky dog toys that mimic the design of its famed whiskey bottle. Writing for the unanimous court, Justice Kagan held that “when an alleged infringer uses a trademark as a designation of source for the infringer’s own goods, the Rogers test does not apply.” The court did not go so far as to do away with the Rogers test, which was created by the Second Circuit “for titles of ‘artistic works’ based on its view that such titles have an ‘expressive element’ implicating ‘First Amendment values’ and carry only a ‘slight risk’ of confusing consumers about the ‘source or content’ of the underlying work.”


trademarks, trademark law, scotus, ip