Today, the Supreme Court issued its decision (9-0) in Jack Daniel's Properties, Inc. v. VIP Products LLC, in favor of Jack Daniel's.
The decision tailored the application of Rogers for expressiveness in trademarks down a bit, but by-and-large left the doctrine intact.
A few quotes:
🔑 "When a mark is used as a mark (except, potentially, in rare situations), the likelihood-of-confusion inquiry does enough work to account for the interest in free expression."
🔑 "[VIP] has consistently argued in court that it owns, though has never registered, the trademark and trade dress in dog toys like “Jose Perro” (cf. Jose Cuervo) and “HeinieSniff ’n” (cf. Heineken). And it has chosen to register the names of still other dog toys, including Dos Perros (#6176781), Smella Arpaw (#6262975), and Doggie Walker (#6213816). Put all that together, and more than “form” or “rote” emerges: VIP’s conduct is its own admission that it is using the Bad Spaniels (née Jack Daniel’s) trademarks as trademarks, to identify product source."
🔑 "Because that is so, the only question in this suit going forward is whether the Bad Spaniels marks are likely to cause confusion. ... But a trademark’s expressive message—particularly a parodic one, as VIP asserts—may properly figure in assessing the likelihood of confusion. A parody must “conjure up” “enough of [an] original to make the object of its critical wit recognizable.” Yet to succeed, the parody must also create contrasts, so that its message of ridicule or pointed humor comes clear. And once that is done (if that is done), a parody is not often likely to create confusion."
🔑 "The point is that whatever you make of Rogers—and again, we take no position on that issue—it has always been a cabined doctrine. If we put this case to the side, the Rogers test has applied only to cases involving “non-trademark uses”—or otherwise said, cases in which “the defendant has used the mark” at issue in a “non-source-identifying way.”"
🔑 "Here is where we most dramatically part ways with the Ninth Circuit, which thought that because Bad Spaniels “communicates a humorous message,” it is automatically entitled to Rogers’ protection. On that view, Rogers might take over much of the world. For trademarks are often expressive, in any number of ways."
🔑 "As [McCarthy on Trademarks] puts the point, the Ninth Circuit’s expansion of Rogers “potentially encompasses just about everything” because names, phrases, symbols, designs, and their varied combinations often “contain some ‘expressive’ message” unrelated to source. That message may well be relevant in assessing the likelihood of confusion between two marks []. But few cases would even get to the likelihood-of-confusion inquiry if all expressive content triggered the Rogers filter. In that event, the Rogers exception would become the general rule, in conflict with courts’ longstanding view of trademark law."
Note: this was adapted from a LinkedIn post predating TechnoLegal. Image credit: SCOTUSblog.
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