In the article “Roger That, Jack: Applying Jack Daniel’s,” attorneys Hans Mayer, Jacob Rosenbaum, and Zach Rufa review the ongoing effects of the Supreme Court’s 2023 Jack Daniel’s decision on trademark litigation.
The authors provide a comprehensive overview of the dispute between liquor manufacturer Jack Daniel’s and VIP Products over the latter’s sale of a “Bad Spaniels” dog toy that looked like a Jack Daniel’s bottle. They trace the litigation from its origins in district court to the landmark Supreme Court decision, and ultimately to its recent conclusion on remand, highlighting the roles of the Lanham Act and the Rogers test, a procedural cornerstone of trademark litigation.
To illustrate the impact of Jack Daniel’s on subsequent trademark disputes, the authors offer analysis of several cases from the last eighteen months in which the Supreme Court’s decision contributed towards a reversal or otherwise informed the outcome. They also identify common fact patterns among the outcomes of these cases—including what invokes the Rogers test—that could provide guidance for practitioners seeking to understand how Jack Daniel’s could affect their clients’ trademark strategy.
Looking ahead, the attorneys maintain that the courts are still defining “when a use will be found to be use ‘as a mark,’” in line with the Supreme Court’s opinion. As such, they encourage brands to “be cautious when referring to others’ marks” in this evolving legal landscape.
Read the full article here.
