Ninth Circuit Narrows Trademark Tarnishment Theory in Jack Daniel’s “Bad Spaniels” Dispute

Court holds that famous-mark owners must prove a concrete likelihood of reputational harm—and that parody remains relevant even when used as a source identifier.

On August 4, 2026, the U.S. Court of Appeals for the Ninth Circuit handed VIP Products a significant victory in its long-running trademark dispute with Jack Daniel’s Properties, Inc. over the “Bad Spaniels” dog toy. The court vacated a permanent injunction barring VIP’s product and directed the district court to enter judgment for VIP on Jack Daniel’s federal dilution-by-tarnishment claim.

The decision provides important guidance on what owners of famous trademarks must prove to establish dilution by tarnishment under the Trademark Dilution Revision Act (“TDRA”). In particular, the Ninth Circuit emphasized that a plaintiff must prove fame, similarity, and a likelihood of reputational harm as to the specific marks at issue. Generalized evidence that a junior product evokes an unpleasant association is not necessarily enough.

The court also held that parody can remain relevant to the ultimate tarnishment analysis even where, as the Supreme Court previously held in this case, the defendant cannot invoke the TDRA’s statutory parody exclusion because it uses the challenged mark as a source identifier.

Key Takeaways

What brand owners and defendants should know

• Tarnishment requires proof of reputational harm, not merely an undesirable association. It is not enough to show that consumers associate a famous brand with an off-color or unpleasant concept.

• Fame must be established mark by mark. A plaintiff cannot rely on the fame of one trademark to establish that other elements of its branding are independently famous.

• Courts must focus on the corresponding famous and junior marks. Non-famous senior marks and dissimilar junior elements cannot simply be aggregated into a broader “brand” theory of tarnishment.

• Context can matter—but evidence still matters. A junior mark that is not tarnishing on its face may still create tarnishment through the context in which it is used, but the plaintiff must prove the resulting likelihood of reputational harm.

• Parody remains part of the analysis. Even when a parody is used as a trademark and therefore falls outside the TDRA’s statutory parody exclusion, its obvious parodic character may reduce the likelihood that consumers will view the famous mark less favorably.

• Generic expert testimony may be insufficient. Evidence about consumer psychology in the abstract may not establish that the particular accused product is likely to harm the reputation of the particular famous marks at issue.

The Dispute: Whiskey, Dog Toys, and a Decade of Litigation

VIP Products sells a line of parody dog toys modeled on well-known beverage products. Its “Bad Spaniels” toy resembles a Jack Daniel’s whiskey bottle, but replaces “Jack Daniel’s” with “Bad Spaniels,” “Old No. 7” with “Old No. 2,” and “Tennessee Whiskey” with “Tennessee Carpet.” The label also includes phrases such as “43% POO BY VOL.” and “100% SMELLY.”

Jack Daniel’s objected and asserted claims for trademark infringement and dilution. After an initial bench trial, the district court found for Jack Daniel’s and entered a permanent injunction. The litigation then traveled through the Ninth Circuit and ultimately to the U.S. Supreme Court.

In 2023, the Supreme Court held that VIP could not invoke the Rogers test for trademark infringement because VIP used the challenged marks as source identifiers for its own product. On dilution, the Court similarly held that the TDRA’s statutory noncommercial-use exclusion does not automatically shield parody when the parody itself functions as a designation of source. The Supreme Court did not, however, decide whether Jack Daniel’s had actually proved dilution by tarnishment.

Following remand, the district court again found VIP liable for dilution by tarnishment and entered a permanent injunction. It separately ruled for VIP on infringement, finding no likelihood of consumer confusion. VIP appealed the tarnishment ruling.

The Ninth Circuit Sets Out a Three-Part Tarnishment Framework

The TDRA permits the owner of a famous and distinctive mark to enjoin use of another mark that is likely to cause dilution by tarnishment, regardless of actual or likely confusion, competition, or economic injury. The statute defines tarnishment as an association arising from the similarity between a mark and a famous mark that harms the famous mark’s reputation.

The Ninth Circuit distilled that standard into three requirements. A plaintiff must establish:

1. that the senior mark is famous;

2. that the allegedly diluting mark is similar to the famous mark; and

3. that the junior mark creates an association with the famous mark that is likely to damage the famous mark’s reputation.

The burden remains on the trademark owner at each step.

That framework proved decisive because the district court had treated Jack Daniel’s collection of trademarks and trade dress too broadly rather than determining which particular marks satisfied the TDRA’s demanding fame requirement.

Fame Cannot Be Borrowed From Another Mark

The Ninth Circuit concluded that Jack Daniel’s had established fame only for the “Jack Daniel’s” word mark and the registered trade dress of its whiskey bottle. It had not independently established that “Old No. 7” was famous for TDRA purposes.

That distinction matters because federal dilution protection is reserved for an unusually narrow category of marks—those sufficiently well known to the general consuming public to qualify as effectively household names. The court emphasized that niche recognition is not enough.

Although the record showed extensive advertising, sales, recognition, and longstanding use of the Jack Daniel’s brand and trade dress, the district court had not separately analyzed the fame of “Old No. 7.” The Ninth Circuit rejected the idea that “Old No. 7” could inherit fame from “Jack Daniel’s”: “The TDRA does not permit borrowing fame from one senior mark to establish the fame of another.”

For brand owners, the lesson is straightforward: a strong overall brand does not necessarily make each component of a trademark portfolio independently “famous” for dilution purposes.

An Offensive Association Is Not Automatically Tarnishment

The district court reasoned that the Bad Spaniels toy created a negative association by linking Jack Daniel’s whiskey—a product intended for human consumption—with dog feces.

The Ninth Circuit found that reasoning insufficient.

The court acknowledged that context can matter. Even where a junior mark is not facially tarnishing, use of a similar mark on a poor-quality, pornographic, illegal, or otherwise objectionable product may support tarnishment in an appropriate case. But the plaintiff still must establish both the association and a likelihood that the association will harm the reputation of the famous mark.

Jack Daniel’s failed at that second step.

Its expert relied on an “Associative Network Model” and general consumer-psychology literature concerning disgust and associations between food or beverages and defecation. But he did not conduct a study specifically measuring consumer reactions to Bad Spaniels.

The Ninth Circuit concluded that this generalized testimony did not establish that consumers’ association between the Bad Spaniels toy and Jack Daniel’s famous marks was actually likely to damage those marks’ reputation. The expert’s conclusion that associating any food or beverage with defecation produces disgust did not account adequately for the fact that Bad Spaniels is a dog toy, rather than a consumable product. The court characterized the contrary inference as conjectural. The decision therefore draws an important line between evidence of a negative concept and evidence of harm to the reputation of a famous mark.

Parody Still Matters After the Supreme Court’s Decision

Perhaps the most notable part of the decision concerns parody.

The Supreme Court previously held that VIP could not rely on the TDRA’s statutory exclusion for certain parodic uses because VIP used its Bad Spaniels branding as a source identifier. But the Ninth Circuit made clear that this did not render the product’s parodic character irrelevant to whether tarnishment had actually occurred.

The Ninth Circuit joined other courts in recognizing that parody used as a trademark is not automatically immune from dilution liability. Still, courts are not required to ignore the parody when deciding whether the plaintiff has proved dilution.

That distinction is important.

A successful parody simultaneously communicates two messages: it evokes the original mark while also signaling that it is not the original and is instead making fun of it. According to the Ninth Circuit, that dual message may affect whether consumers are likely to transfer any negative associations generated by the joke to the reputation of the famous mark itself.

The district court’s error was compounded because Jack Daniel’s expert did not account for that dynamic. Although his analysis recognized that the purpose of Bad Spaniels was to call Jack Daniel’s to mind, it did not examine whether consumers would understand the scatological references simply as part of an obvious joke rather than as information capable of degrading the reputation of Jack Daniel’s. The Ninth Circuit characterized that omission as a “critical misstep.”

Practical Implications for Brand Owners

The ruling does not eliminate dilution-by-tarnishment claims, nor does it create a categorical parody defense.

But it signals that courts may demand a more disciplined evidentiary showing from famous-mark owners.

Before pursuing a tarnishment theory, brand owners should consider separately whether each asserted mark independently qualifies as famous under the TDRA and whether the accused junior mark corresponds sufficiently to that famous mark. They should also develop evidence aimed at the ultimate statutory question: whether the challenged use is likely to harm the reputation of the famous mark, rather than merely showing that the use is crude, offensive, or inconsistent with the image the brand seeks to project.

Where expert testimony is used, the opinion suggests that product-specific or consumer-specific evidence may carry substantially more weight than generalized theories of consumer psychology.

Practical Implications for Defendants and Parody Products

For defendants, the opinion confirms that losing the benefit of the TDRA’s statutory parody exclusion does not end the analysis.

A parody that functions as a source identifier may still avoid liability if the trademark owner cannot establish the substantive elements of tarnishment. Defendants should therefore scrutinize the plaintiff’s proof of fame on a mark-by-mark basis, the precise similarity between the senior and junior marks, and—most importantly—the evidence connecting the accused use to actual likely reputational harm.

The decision also reinforces the distinction between association and dilution. A parody may be designed specifically to call a famous mark to mind; that alone does not establish that the famous mark’s reputation is likely to suffer.

Bottom Line

The Ninth Circuit held that Jack Daniel’s failed to prove that Bad Spaniels was likely to tarnish its famous marks. The court therefore vacated the permanent injunction and instructed the district court to enter judgment for VIP on the federal dilution claim.

For companies with high-profile brands, VIP Products v. Jack Daniel’s Properties underscores that the TDRA provides powerful—but narrow—protection. A famous-mark owner must do more than demonstrate that an accused product evokes its brand in an unflattering way. It must establish, with evidence tied to the marks and use at issue, that the association is actually likely to damage the reputation of a qualifying famous mark.

And for parody defendants, the decision confirms an equally important principle: even where parody does not provide a categorical statutory safe harbor, the joke itself may still matter.