Trademark holders face a common dilemma in deciding whether and how to respond when their marks are used for comic effect, particularly when the humor is done at their expense for another’s commercial gain. Instinctively, trademark holders want to protect their marks, often with an aggressive legal response. But that approach is not always wise and is now less likely to succeed, at least in one appellate Circuit, following a recent case involving the well-known Jack Daniel’s brand.

The case involves Arizona-based VIP Products, which makes and sells dog chew toys with branding that plays on well-known alcoholic beverage and soda brands. According to VIP, its dog toys reflect “on the humanization of the dog in our lives” and comment on “corporations that take themselves very seriously.”

In July 2014, VIP introduced the “Bad Spaniels” toy, pictured below, which mimics the Jack Daniel’s whiskey bottle with some bathroom humor: “Old No. 2 on your Tennessee Carpet,” “43% POO BY VOL,” and “100% SMELLY.”

Continue Reading Mona Lisa or Dog Doo? Humor Avoids Trademark Liability

Trademark enthusiasts, hold onto your hats. The Trademark Trial and Appeals Board (TTAB) just got a bit of a promotion, compliments of the U.S. Supreme Court. On March 24, 2015, the Court released its decision in the long-awaited B&B Hardware v. Hargis Industries case, holding that TTAB findings of mark similarity can be preclusive in later federal proceedings as long as “the ordinary elements of issue preclusion are met.”  This ruling stands in direct opposition to the majority of recent federal precedent, and may dramatically increase the import of TTAB rulings in the coming years. In other words, the TTAB just got a lot more powerful.

What is this case about, anyway?

This case initially arose when Hargis Industries applied to register the trademark “SEALTITE” in the construction industry in 1996.  B&B Hardware opposed this application and simultaneously filed a trademark infringement lawsuit, asserting that B&B had previously registered the trademark “SEALTIGHT” in 1993. While B&B’s federal suit was pending the TTAB determined that Hargis’s proposed mark was confusingly similar to B&B’s mark and denied Hargis’s trademark application. As a result, B&B argued in its district court proceeding that the TTAB’s finding of mark similarity was entitled to preclusive effect in the court. 
Continue Reading TTAB Rulings Held Preclusive in Federal Court