Trademark Law

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Jack Daniel’s Properties, Inc. has petitioned the Supreme Court of the United States for certiorari following an unfavorable ruling from the Ninth Circuit in the matter of VIP Products LLC v. Jack Daniel’s Properties, Inc. In that case, VIP Products sued Jack Daniel’s after receiving a cease-and-desist letter concerning its Bad Spaniels Silly Squeaker dog toy. The toy is intentionally similar to the famous Jack Daniel’s Old No. 7 whiskey bottle, but is clearly intended to be a joke.

Instead of saying Jack Daniels, the bottle says Bad Spaniels and includes a cartoonish cocker spaniel. Below that, where the Jack Daniel’s bottle usually says “Old No. 7,” the toy says “The Old No. 2” above “on your Tennessee Carpet” where the real bottle says Tennessee Whiskey. The squeaky toy is clearly intended as joke for dog owners, and I don’t believe it would confuse consumers into believing the product is actually associated with Jack Daniel’s. Jack Daniel’s apparently felt differently.

The district court agreed with Jack Daniel’s. While ruling on a motion for summary judgment, the district court held that the Rogers test, which is used to balance the interests between trademark law and the First Amendment, was inapplicable because the toy is not an expressive work. Later, after a four-day bench trial, the District Court ruled against VIP Products and found it had infringed Jack Daniel’s IP.…
Continue Reading Dogs, Whiskey, and Intellectual Property: Need I Say More?

Almost five years ago, I wrote an article published in the Daily Recorder about a ruling in the Tiffany & Co. v. Costco Wholesale Corporation case filed in the United States District Court for the Southern District of New York. Specifically, I wrote about the Court granting Tiffany’s motion for summary judgment on liability, permitting Tiffany to proceed to trial on the issue of damages. Tiffany eventually did exactly that and obtained a $21 million judgment against Costco for selling unbranded engagement rings as “Tiffany” diamond engagement rings. But just over a week ago, the Second Circuit Court of Appeals vacated the judgment of the District Court and remanded the case for trial.

To recap, Tiffany sued Costco for selling other rings and using the word Tiffany on nearby signage to describe those rings, claiming trademark infringement and unfair business practices. Costco responded to the allegations by claiming that “Tiffany” is a word used throughout the industry to refer to a particular style of setting–a diamond solitaire in a six-prong setting. Costco argued that consumers are aware of this use of “Tiffany” and that its use was therefore unlikely to cause consumer confusion. Costco also argued that Tiffany is not a legally protected trademark because the mark is descriptive or generic for that style of setting. For that reason, Costco requested that the Court cancel Tiffany’s trademark.…
Continue Reading The Second Circuit Vacates Tiffany & Co.’s $21 Million Judgment for Trademark Infringement and Counterfeiting Against Costco

Imagine litigating an infringement case for two years, and after a nine day jury trial, obtaining a jury’s verdict that says you’ve established infringement and awards your client $5,000,000.  Then you realize that the jury has awarded your client $0 in actual damages, and the entire $5,000,000 sum is for punitive damages.  The Ninth Circuit in an unpublished opinion in Monster Energy Company v. Integrated Supply Network, LLC (July 22, 2020), reiterated that a party is not entitled to punitive damages without a finding of actual damages.

Monster Energy Company is a well-known energy drink giant that does a lot of sponsorship in the motorsports area with its distinctive green M logo.  In 2017, it sued Integrated Supply Network for infringement of its Monster marks.  Integrated Supply is a Florida automotive-supply company that sold various Monster Mobile and ISN Monster lines of goods that Monster Energy Company claimed infringed on its marks.…
Continue Reading You Must Prove Actual Damages if You Want Punitive Damages in an Infringement Action

On Monday, July 13, 2020, the ownership group of the Washington Redskins (the “Team”) announced that it will abandon the Redskins team name after nearly 30 years of controversy. The decision, despite what the Team says, is likely the product of societal pressure, which was reinforced by powerful corporations, such as Nike and Amazon, that refused to sell Redskins merchandise because of the Team’s disparaging moniker. Within days of the corporations refusing to sell their merchandise, the Team announced that it would undertake a “thorough review” of its name. Just over a week later, the Redskins announced that the name would be “retire[d].” But before you give the Team too much credit, let’s consider what it took to get here.…
Continue Reading After Nearly 30 Years of Controversy, the Washington Redkins Will Retire the Redskins Team Name and Trademark