Branding, including acquiring and protecting your trademarks, is essential to growing your business and protecting against other companies getting a free-ride on your reputation and goodwill.

In 2007, Louis Vuitton sought to stop the sale of dog toys named “Chewy Vuitton.”  In that case, the appeals court ruled against Lous Vuitton, reasoning the use of the mark was a clear parody, and therefore deemed fair use.

Jack Daniel’s recently sought to stop the sale of “Bad Spaniels” dog toys.  In the Spring 2023 term, the Supreme Court issued a unanimous decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, having important implications. Jack Daniel’s sued VIP Products for trademark infringement. The lower court ruled in favor of VIP Products, similar to the Louis Vuitton ruling, finding the toy, and the use of the “Bad Spaniels” name, was protected by the First Amendment as a parody.

Here, by contrast, the Supreme Court reversed the appeal court decision, holding that the First Amendment is not a defense to trademark infringement claims against a famous trademark when the use of a trademark is a designation of source for one’s own goods or services. Moreover, the First Amendment does not protect using someone else’s trademark in a parody if the use is likely to cause confusion about the source of the goods or services or is likely to mislead consumers into thinking that the parody work is actually associated with the trademark owner.

For those who are choosing a potential trademark, you should avoid using a trademark that is likely to be confused with the trademarks of others. Even if your use of the trademark is humorous or satirical, you may still be liable for infringement if your use is likely to cause consumers to believe that your goods or services are those of the trademark owner.  When selecting or using a potential trademark, do not presumptively rely on the First Amendment to protect your use.

For those who own an existing trademark, the decision provides additional levels of protection against the use of your trademark by others. If someone else uses your trademark as a designation of source for their own goods or services, you may be able to sue them for trademark infringement, even if their use of the trademark is humorous or satirical.

The Jack Daniel’s decision further re-iterates the importance of acquiring a Federal Trademark registration on the Principal Register.  While you can acquire common law rights in marks you use in interstate commerce, having a registration with the U.S. Trademark Office provides prima facie evidence of validity, strengthening your position against infringing parties.

The Supreme Court’s decision in the Jack Daniel’s case has important implications for trademark law, further supporting the strong business practice to conduct assessments of your company’s existing and potential marks.