The TMCA

Most companies would love to have their product become a viral sensation, but in the age of viral media and “internet dupes,” companies are forced to fire on all cylinders to successfully secure and defend the intellectual property rights when one of their products takes off unexpectedly. Just look at the newest internet-sensation plush toy: Labubu. Labubus are fuzzy, monster-like toys that have gained popularity among a variety of ages, finding a large fanbase on TikTok. These toys are the creation of Kasing Lung, the illustrative artist of the book series, “The Monsters.” Following the publication of this series, Lung released a toy version of the “monsters.” And in 2019, Lung teamed up with POP MART, a Chinese toy company, to take this toy line to the next level. POP MART did exactly that, although its success did not occur overnight. This new monster collection toy line received the name—“Labubu.” Despite Labubu’s launch in 2019, POP MART did not seek trademark rights until after the beginning of the toy’s viral success in 2024. And even then, POP MART filed only for the registered word mark “Labubu.” Since 2024 Labubu replicas have been popping up all over the internet, including dupes touting the name "Lafufu." Obtaining registered trademarks for these internet sensation toys pose challenges, especially when filing after going viral, like POP MART. While there are well-established rules in U.S. trademark law that the first to use the mark in commerce has trademark priority, this is does not completely curtail the filing frenzy. Not to mention, securing trademark rights early can help companies enforce their rights after the inevitable “dupes” surge the market. Labubu                                                             3-D Printed Look-Alike One option for POP MART may be to assert trade dress claims. Squishmallows, a different internet-viral plush toy, have also faced widespread copyright and trademark issues from internet dupes. Squishmallow’s manufacturer, Kelly Toys Holdings, filed for trademark protection of the word mark “Squishmallow” in 2018, several years before the peak of its internet fame in 2023. However, like POP MART, Kelly Toys did not file for trade dress protection for its plush, egg-shaped line of toys. But with its rise in internet fame (and therefore dupes), Kelly Toys has taken an active stance in the enforcement of its trade dress rights. In February 2024, Kelly Toy sued Build-A-Bear Workshop, Inc. in Kelly Toys Holdings, LLC v. Build-A-Bear Workshop, Inc., 2:24-cv-01169, alleging that Build-a-Bear’s new line of plush toys had the same distinctive trade dress as Squishmallows. For a trade dress infringement claim in California to succeed, the plaintiff must “clearly articulate” its claim to give the defendant adequate notice of the total image, design, and appearance of the trade dress. In its complaint, Kelly Toys described the Squishmallow trade dress to include: egg-shaped plush toys depicting various characters, simplified Asian style Kawaii faces with repeating rounded graphics, embroidered facial features, short-pile velvety velour-like fur, and a squeezable marshmallow feel. Build-A-Bear moved to dismiss the complaint, arguing that the Plaintiff’s description of its trade dress was overbroad, vague, and included “generic and functional features commonly found in plush products.” However, the California Central District Court disagreed with Build-A-Bear, concluding that the focus of a trade-dress analysis is not about the individual features but rather the “overall visual impression that the combination and arrangement [] those elements create.” The court also disagreed with Build-A-Bear’s argument that to assert a protectable trade dress, Kelly Toys must allege a trade dress that is “common to all items in the series or line.” Build-A-Bear argued that because Kelly Toys’s trade dress description could not apply to its over 3,000 product line of Squishmallows, it could assert no trade dress whatsoever. The court held that this sort of fact-intensive, product-by-product analysis is inappropriate at the pleading stage, but the court noted that it could revisit the consistent-overall-look test at the summary judgment stage with a developed factual record. A trade dress claim by Labubu may face similar opposition. Like the Squishmallows in Kelly Toys, Labubu’s signature features—its expressive eyes, oversized head, and mischievous expression—taken together may create a recognizable aesthetic associated with the Labubu brand. However, also like Squishmallow’s range of plushies, there are distinctive features across the iterations of Labubu’s expanding product line. POP MART has already taken some legal action. Earlier this year, a Chinese court ruled in favor of POP MART, finding the sale of 3D printed Labubu duplicates to be a violation of Chinese copyright laws. Time will tell if POP MART uses other tools to protect Labubu products and whether they can do so before the market moves on to the next fad.

40 years ago, I was the new kid in 6th grade – truly a terrible age in a young girl’s life to try and “fit in” at a new elementary school in a small town. But, one of my best memories from that year was procuring my first pair of blue and white checkered Vans shoes. Not many people had them where I lived, though the shoes had been around for nearly 20 years at that point. Even then I knew and appreciated the beauty of unique shoes, so imagine my delight in seeing a resurgence in the popularity of the shoes again in the marketplace the last handful of years, and the ability to add to my personal collection of awesome shoes. Vans are undoubtedly iconic. The shoes have been available since 1966, with a broad customer base, including skateboarders, BMX bike riders, celebrities, and people that just appreciate unique and functional shoes. Of its shoes, the “Old Skool” style is arguably instantly recognizable: The staple in the closet of any owner of Vans shoes comes with a price tag of about $60 for a pair of shoes, and Vans has worked with multiple artists and celebrities to create and sell special edition versions of its shoes. Special patterns, platforms, hi-tops, mid-tops . . . a marketable commitment to innovation that reaches the broadest base of consumers. MSCHF Product Studio, Inc. is a Brooklyn-based art collective with a mission to “use artwork to start a conversation about consumer culture . . . by participating in consumer culture.” MSCHF created the “Wavy Baby” sneaker purportedly as a parody of the Old Skool shoes, to serve as social commentary about the inherent consumerism in “sneakerhead culture.” MSCHF co-Chief Creative Officer explained that “The Wavy Baby concept started with a Vans Old Skool sneaker” “because no other shoe embodies the dichotomies between ‘niche and mass taste, functional and trendy, utilitarian and frivolous’ as perfectly as the Old Skool.” As a starting point, MSCHF took an image of a Vans Old Skool skate shoe, and then used a digital filter tool to transform the shoe “into the modern, wobbly, and unbalanced realities.” MSCHF then collaborated with musical artist Tyga as part of a marketing campaign in connection with releasing a limited run of the sneakers for purchase by consumers, with a hefty price tag of $220 per pair. Of course, Vans quickly caught wind of the campaign and, pending release of the Wavy Baby sneakers for purchase, sent cease and desist letters to both Tyga and to MSCHF. MSCHF nonetheless continued to promote its shoe campaign and launched a one-hour window sales promotion for consumers to purchase 4,306 pairs of Wavy Baby shoes, which sold out. (Here’s the math: $220 multiplied by 4,306 is $947,320) Not surprisingly, Vans filed suit in the U.S. District Court for the Eastern District of New York, including a federal claim of trademark infringement under the Lanham Act. It also filed a Motion for a Temporary Restraining Order and Preliminary Injunction, which was granted by the district court because “Vans had shown a significant danger of consumer confusion” and also that it would suffer irreparable harm without injunctive relief. Notably, the district court rejected MSCHF’s argument that its parodic work of artistic expression was subject to special First Amendment protections rather than the traditional likelihood of confusion test. As the court put it, while courts have “considerable leeway to parodists whose expressive works aim their parodic commentary at a trademark or a trademark product . . . they also have not hesitated to prevent a manufacturer from using an alleged parody of a competitor’s mark to sell a competing product.” In other words, a successful parody should simultaneously convey that it is not the original and is a parody. Given Vans’ significant collaborative efforts with artists and its visibility in the marketplace, as well as the manner in which MSCHF ran its advertising campaign and its sale of actual Wavy Baby shoes to consumers, the court concluded that “the Wavy Baby shoes on their face did not clearly indicate to the ordinary observer that MSCHF is not connected in any way with the owner of the target trademark.” MSCHF then appealed the decision to the U.S. Court of Appeals for the Second Circuit, which affirmed that MSCHF is not entitled to special First Amendment protections. In doing so, the court took into account the recent Supreme Court decision in the Jack Daniel’s Properties, Inc. v. VIP Products LLC case and the Rogers v. Grimaldi case, both of which provide guidance as to whether an expressive work is entitled to heightened First Amendment scrutiny. Where an artistic expression is in play, a trademark infringement claim may be more narrowly applied. The Second Circuit held in Rogers that the Lanham Act should not apply to “artistic works” as long as the defendant’s use of the mark is (1) artistically relevant to the work, and (2) not “explicitly misleading” as to the source or content of the work. The Supreme Court’s decision in Jack Daniel’s also clarifies when the Rogers test and its heightened First Amendment protections DO NOT apply – i.e., when the allegedly infringing mark is used as a source identifier for its own goods. The Second Circuit held that the Supreme Court’s Jack Daniel’s decision “forecloses MSCHF’s argument that Wavy Baby’s parodic message merits higher First Amendment scrutiny under Rogers” because the Wavy Baby shoes at issue were used “at least in part” for source identification. MSCHF made use of the Old Skool trademarks and trade dress, it included its own branding on the Wavy Baby sneakers, and it failed to include a disclaimer disassociating it from Vans or Old Skool shoes. Ultimately, MSCHF sold nearly $1,000,000 in shoes through the benefit of the good will that Vans owns in the Old Skool shoes and its distinctive branding. This use of Vans’ trademarks as a source-identifier to sell its Wavy Baby shoes to the general public works directly against parody protection under Rogers. “ . . . if a parodic use of protected marks and trade dress leaves confusion as to the source of the product, the parody has not “succeeded” for purposes of the Lanham Act, and the infringement is unlawful.” MSCHF’s ostensible mission is to “use artwork to start a conversation about consumer culture . . . by participating in consumer culture.” It certainly didn’t work out very well for them here.

Welcome to the final chapter of our Burger War Trilogy. In our earlier installments, Part I and Part II, we discussed the secondary meaning surveys proffered by both parties in this trade dress dispute. We now turn to In-N-Out’s likelihood of confusion study in this case as it provides the perfect opportunity to discuss a decision that trial counsel and their consumer survey experts routinely grapple with: To Squirt, or Not to Squirt, that is the question. Before discussing that question in the context of this dispute, a slight detour is in order. Broadly speaking, there are two types of generally accepted consumer survey formats when testing for “likelihood of confusion” in trade dress and trademark cases. There is the “Eveready” format, and the “Squirt” format. The Eveready format has been referred to as the “gold standard” when the senior user’s trade dress or trademark is a commercially strong mark. In an Eveready survey design, the senior user’s mark or trade dress is not shown to survey respondents as part of the survey and is assumed to be known to most of the relevant consumers and thus already in mind. Instead, respondents are just shown the (allegedly) offending trademark or trade dress and asked a series of questions regarding who they believe makes or puts out the product or service at issue or who the product or service might be affiliated with. By contrast, the Squirt design shows both parties’ trademarks (either juxtaposed together at once or separately seriatim) and asks a series of questions as to whether the survey respondents believe there is an affiliation or connection between the products or the companies that put them out. Neither format is necessarily a panacea in all cases. Some courts criticize the use of the Eveready format in cases where the senior user’s mark is not commercially strong because it artificially deflates confusion on the theory that not enough respondents are familiar with the senior user’s mark to draw a connection with the junior user’s mark. See e.g., Vineyard House, LLC v. Constellation Brands United States Operations, Inc., 515 F. Supp. 3d 1061, 1072 (N.D. Cal. 2021) (noting the “[w]here the query concerns marks for everyday products, used by vast majority of consumers, such as Apple, Coca-Cola, or EverReady, the short simple survey can provide some insights. That is not, and never was, this case.”); but see Hal Poret’s study in the Trademark Reporter where he concludes that “the research described herein empirically demonstrates that Eveready surveys may be appropriate for senior marks that are not top-of-mind.” The Squirt format can create “demand effects” by suggesting to consumers that there must be a connection between the two companies whose products they have just been shown. A number of courts have suggested that unless the two products are actually sold or marketed in close proximity in the marketplace, a Squirt design should not be used. See e.g., Down the Hatch: Jägermeister Douses Impaired Survey Evidence in Trademark Victory. In the present case, In-N-Out’s expert used the Squirt design in which images of the In-N-Out and Doll N’ Burger restaurants were shown seriatim, and her survey took a bit of grilling from the opposing party for doing so. The primary argument advanced by Doll N’ Burger’s expert (who used an Eveready format for his own defensive likelihood of confusion survey) is that the parties’ goods are not sold in the same geographic markets. Thus, because consumers are not likely to encounter them in close proximity in the marketplace, the Squirt design should not be used, or so went the argument. Notwithstanding these and other alleged deficiencies, the Court ultimately ruled that Plaintiff’s expert’s decision to use Squirt was a “judgment call” and that the wisdom of that call is for the fact finder. Also, the Court observed that Doll N’ Burger’s expert had used a similar Squirt design in a recent case where the two companies “d[id] not serve the same geographic regions.” In non-judicial parlance, what’s good for the goose is good for the gander. Here are some final thoughts on this burger bonanza: Use of either the Squirt or Eveready survey designs should be carefully considered by trial counsel and their experts and the pluses and minuses of both designs should weighed and assessed based on the marketplace context of the dispute. Trial counsel should be mindful of statements being advanced by an expert in your case vs. what the expert may have said or survey designs chosen by the expert in prior cases. Having a thorough, detailed discussion of the rebuttal points being advanced by the expert will be important. Don’t rule out reviewing prior reports and declarations of the expert - although it could be a bit time consuming, it could prove to be illuminating and prepare the expert for anticipated cross-examination or critiques. Lastly, the Court’s decision is a whopper of a Daubert order. The discussion of survey evidence was over 30 pages long. We did not cover all of the issues set forth in the decision in this three-part series. If you are dealing with survey evidence in a trade dress dispute, you should spend a bit of time devouring this decision along with our prior blog posts. You will leave satisfied!

Last week we introduced our readers to the imbroglio featuring the burger behemoth In-N-Out, who accused upstart Doll N’ Burgers of infringing In-N-Out’s registered and unregistered trade dress. Typical of these sorts of savory squabbles, both sides retained consumer survey experts, both experts took broadsides from the opposing party, and the Court was left to assess the damage. In our previous post, we discussed how the Court’s analysis of Plaintiff’s secondary meaning survey provides some useful sustenance. This week’s special features a discussion of Defendant’s secondary meaning survey and how the claimed deficiencies left the Court asking Plaintiff, “Where’s the Beef?” Here’s how the Court disposed of the issues raised regarding Defendant’s secondary meaning survey: No Trade Dress Secondary Meaning Experience. Plaintiff first alleged the Court should bounce Defendant’s expert because he only had experience designing surveys in trademark disputes, not trade dress disputes. The Court quickly (and correctly) rejected this claim because “[w]hile trade dress involves some unique factors, the legal standards utilized are closely aligned, and the consumer survey methodology used for trademark and trade dress are largely interchangeable.” Excluding Other “Indicator of Source” Elements. As we observed in our previous post, when testing for secondary meaning of trade dress, it is customary to obscure the “brand and company name and other source-identifying indicia” so that the expert can isolate the trade dress at issue and measure consumer reactions to it. Accordingly, Defendant’s expert used various pictures of In-N-Out joints, but removed the “source-identifying indicia” from them, including the trademarked palm trees, the In-N-Out logo, and the fluorescent yellow sign. The Court was not persuaded that this was a fundamental flaw (or even a flaw of any kind). It indicated that this design choice was a “judgment call” and that Plaintiff was free to criticize this approach at trial if it desired to do so. Control Images Were Not “Blatantly Improper.” Plaintiff also took aim at Defendant’s expert’s decision regarding the control stimulus. For the control design, Defendant’s expert simply used the same test stimulus images, but swapped in a “blue and grey” color scheme instead of the red and white color scheme of Plaintiff’s alleged trade dress. The Plaintiff argued that the expert’s control images were “so distinctive” that it pushed survey respondents in a totally different direction towards a rival burger joint altogether, White Castle. While the Court questioned whether Defendant’s expert used a control that would “lean towards” Defendant’s desired outcome, it ultimately concluded that the expert’s decision was not “blatantly improper.” No “Freeloader” Phenomenon in the Survey Universe. Lastly, Plaintiff claimed Defendant’s expert’s survey universe was faulty. In defining who qualified for the survey, Defendant’s expert required respondents to be adults who had recently "personally purchased" a burger from a fast-food restaurant. Plaintiff claimed this universe was too narrow because it excluded “freeloaders” (the Court’s word) who would have dined at a burger joint but on someone else’s dime. In rejecting this argument, the Court observed that it was “highly skeptical that the inclusion of the word ‘personally’ caused any material change in the survey's population or led to bias in its results.” All in all, none of these alleged flaws were sufficient to keep Defendant’s expert out. So now you know “the rest of the story” with regards to the secondary meaning surveys in this case. Stay tuned for our final installment where we discuss both parties’ likelihood of confusion studies and whether they will be In-N-Then-Out of Court. One of Defendant’s Expert's "test" stimuli photos that excluded palm trees (from the cup and the fries holder) because they were other “source-identifying indicia.” Two of Defendant’s Expert's "control" stimuli photos that used a “blue and grey” color scheme. While expressing some skepticism over this design choice, the Court noted the decision was not “blatantly improper.”

A burger brouhaha involving the Lanham Act is well underway in the Wolverine state. Plaintiff In-N-Out Burgers operates hundreds of fast food joints in the West. Defendant Doll n’ Burger recently opened two locations in Michigan. In-N-Out filed suit in Michigan alleging that Doll n’ Burger is infringing In-N-Out’s registered and unregistered trade dress. Both sides retained consumer survey experts, both sides lobbed multiple critiques at their opponent’s surveys, and both sides sought to “Daubert” the other side’s expert. Doll n’ Burger requested a jury “for all jury-triable claims,” and so the Court might be expected to take a close look at alleged flaws in the respective surveys to avoid admitting evidence that is irrelevant to the issues at hand or that could be more prejudicial to the jury than the purported relevance. Instead, U.S. District Court Judge Robert Cleland criticized the approach taken in the competing exclusion motions, saying he viewed “both sides’ scattershot approach to discrediting the opposing expert with a degree of suspicion.” Reminding the parties that there is no such thing as a “perfect” survey and that most methodological flaws in a survey bear on the weight rather than the admissibility of the survey, Judge Cleland considered the “legion” of reasons raised by the parties for keeping the experts out, and found that these reasons amounted to a mere nothing burger. While neither side’s expert was shown the door, the myriad issues raised by the parties are worthy of a deeper dive. In this multi-part series, we discuss some of the more salient issues associated with both parties’ survey experts. We start with some of the major critiques leveled at In-N-Out’s secondary meaning survey. Not Testing Every Trade Dress Element. Doll n’ Burger challenged In-N-Out’s expert’s decision to include in the survey stimuli images of the trade dress that did not include all 9 elements of the Plaintiff’s trade dress. The Court rejected this claim because “Defendants cite no case law supporting their implicit proposition that a survey cannot test the ‘overall appearance’ of a retail establishment unless every possible element of the trade dress is visible in the test images.” Including Other “Indicator of Source” Elements. When testing for secondary meaning of trade dress, it is customary to obscure the “brand and company name and other source-identifying indicia” so that the expert can isolate the trade dress at issue and measure consumer reactions. Doll n’ Burger alleged Plaintiff violated this rule when she failed to remove certain elements in her test stimuli (such as the In-N-Out “Palm Trees”) that also act as an indicator of source. While the Court agreed with the criticism, it determined this methodological flaw would go to the “weight” of the survey and not its “admissibility.” Plaintiff's Expert's "test" stimulus that included palm trees—a source identifier that arguably should have been removed from the stimulus before testing A Close Call on Survey Universe. The composition of the survey’s universe is “one of the most important factors in assessing the validity of a survey as well as the weight it should receive.” Plaintiff’s expert limited her survey universe to respondents situated in the seven western states where In-N-Out operates. But the wrinkle here is that Plaintiff alleged claims for both registered and unregistered trade dress. Thus, Defendant argued, Plaintiff’s expert could not opine on secondary meaning when her survey respondents were only located in the western part of the U.S. The Court ultimately rejected that claim and concluded that: “Plaintiff has two routes to establishing an enforceable, common law trade dress based on acquired secondary meaning. Plaintiff can demonstrate that the look of In-N-Out's restaurants has ‘acquired secondary meaning among some substantial portion of consumers nationally’ or it can use a narrower survey to help establish secondary meaning in a more limited geographic region and still pursue a claim for infringement if it can show Defendants (1) had ‘knowledge of’ the trade dress and (2) ‘intentionally copied it.’” While none of these alleged flaws were beefy enough to keep Plaintiff’s consumer survey expert on the outside looking in, this decision nonetheless provides valuable insight and analysis on some of the key issues that should be considered when it comes to developing survey evidence in trade dress disputes. In our next installment, we will rustle up some more insights for you when we dive into Doll n’ Burger’s secondary meaning survey.

We previously blogged about Airwair Int’l v. Pull & Bear and how Doc Martens successfully challenged Defendant’s expert who opined on secondary meaning and likelihood of confusion. Now, the shoe is on the other foot. Doc Martens’ expert found himself in the hot seat for offering improper legal conclusions regarding Doc Martens’ trade dress rights. Take a load off and read on so you don’t find yourself getting cold feet the next time you are considering using experts in a trade dress dispute. Doc Martens is the purveyor of the wildly popular clunky-soled combat boots and shoes with yellow stitching simply known as “Docs.” As Rolling Stone magazine recently commented, those who have sported Docs over the years “runs the gamut from Eddie Vedder and Morrissey, to Rancid and Rihanna.” Doc Martens owns several trade dress registrations and sued Pull & Bear Espana SA for allegedly selling several styles of footwear that infringe on Doc Martens’ trade dress. Pull & Bear countersued, claiming that Doc Martens’ trade dress rights were invalid. Between the two sides, they retained a small squadron of experts for the purposes of opining, rebutting, and excluding. Doc Martens offered rebuttal expert testimony from a distinguished law professor who, among other things, opined that Doc Martens’ “registered trade dress is unambiguous, valid, and protectable.” He also opined that the registrations “comport with” certain requirements mandated by the USPTO. The Court excluded this rebuttal opinion because an “expert cannot testify to a matter amounting to a legal conclusion." Whether a given trade dress is “presumptively valid” or “enforceable” are ultimately calls for the court to make, not for an expert witness. Similarly, whether a registration comports with USPTO requirements is also a legal conclusion and not appropriate for expert testimony. In walking a mile in Doc Martens’ shoes, we can see where it was possibly headed with this proffered testimony. Federal Rule of Evidence 704 tells us that “[a]n opinion is not objectionable just because it embraces an ultimate issue.” After all, whether a given trade dress is valid and enforceable is certainly one of the “ultimate issues” in any trade dress infringement case. Thus, we could see how trial counsel could find it alluring to have a well-regarded law professor provide a rebuttal opinion on this important issue. Trial counsel must remember, though, that Federal Rule of Evidence 702 mandates that an expert’s testimony is only admissible in the first instance if it will “help the trier of fact to understand the evidence or to determine a fact in issue.” When an expert ventures into the realm of explaining what the law is or renders a legal opinion, that’s going to be a bridge too far. Just as it was here.

We’ve discussed a number of cases lately where flimsy consumer surveys were tossed out as unreliable under Daubert. This latest installment presents a slightly different twist. It discusses a recent case where the Defendant’s expert opined on the issue of secondary meaning and consumer confusion without a survey at all. As it turns out, Plaintiff’s expert successfully booted this proffered evidence. Read on so that you don’t end up kicking yourself when faced with a similar situation. Today’s case involves Doc Martens, the British footwear brand known for its chunky-soled combat boots that are routinely sported by the likes of Kendall Jenner, Gigi and Bella Hadid, and other Hollywood denizens. Doc Martens owns a number of U.S. trade dress registrations for its boots, and it was none too happy when a company by the name of ITX allegedly sauntered into the marketplace with its own clunky-looking imposters. Doc Martens sued for trade dress infringement, ITX lobbed counterclaims of trade dress invalidity, and the parties were officially off to the races. ITX retained a footwear industry expert to rebut Doc Martens’ infringement claims. Specifically, ITX’s expert offered an opinion that the Doc Martens at issue lacked secondary meaning and that consumers were not likely to be confused by ITX’s boots in any event. In opining on the lack of secondary meaning, ITX’s expert asserted that the Doc Martens footwear designs “are so common in the footwear industry that no one manufacturer has the exclusive right to use the elements.” As the Court noted, though, secondary meaning is based on a number of factors, including exclusivity, length of use, sales, consumer recognition, and other factors. ITX’s expert only offered an opinion on “exclusivity” and was, therefore, based on “mere conjecture.” In opining that consumers would not be confused, ITX’s expert cobbled together a “side-by-side” comparison of the various boots and pointed out the differences among them. The Court rightfully observed that “a side-by-side comparison is improper if that is not the way consumers encounter the product in the market.” Because there was no evidence that these dueling boots were encountered together by consumers in the real marketplace, ITX’s expert opinion got the boot on this issue as well. The moral of this saga is this: if you are attempting to offer evidence of secondary meaning, make sure you consider all the legal elements associated with that endeavor. Moreover, if you are trying to establish a lack of confusion in the marketplace, run—don’t walk—to a competent consumer survey expert for a proper assessment. Fail to heed either of these and you may be kicking yourself.

Is humor protected speech? Although the answer might seem like an obvious yes, a dog toy maker’s Jack Daniel’s bottle lookalike dog chew toy with poopy puns blurs the line between freedom of expression and the protection of famous marks. In 2014, VIP Products LLC began selling a dog chew toy designed to look like the Jack Daniel’s whiskey bottle, but bearing the name “Bad Spaniels.” In place of the “Old No. 7 Sour Mash Whiskey” that can be found on the famous whiskey bottle, VIP Products’ dog toy humorously states “Old No. 2. on your Tennessee Carpet.” Jack Daniel’s issued a cease and desist letter, which resulted in VIP Products dragging the whiskey maker into court. VIP Products filed a declaratory judgment action in the U.S. District Court for the District of Arizona seeking the court to declare that Bad Spaniels did not infringe or dilute any trademark rights and that Jack Daniel’s trade dress and bottle design were not entitled to trademark protection. Jack Daniel’s filed federal and state law counterclaims for infringement and dilution by tarnishment of its trademark and trade dress. After a four-day bench trial, the District of Arizona found in favor of Jack Daniel’s. On January 29, 2018, the district court issued its ruling which held that Jack Daniel’s had established the likelihood of consumer confusion and established that the Bad Spaniels dog toy likely tarnished the reputation of Jack Daniel’s trademarks by linking a product for human consumption with dog poop. Notably, the District of Arizona specifically rejected VIP Products’ defense that its Bad Spaniels chew toy merited heightened First Amendment protection. VIP Products filed an appeal to the Ninth Circuit. On March 31, 2020, the Ninth Circuit issued its decision. It did not disturb the district court’s factual findings that VIP Products’ use of the Jack Daniel’s trademarks and trade dress created a likelihood of confusion. Rather, the Ninth Circuit ruled that the Bad Spaniels dog toy merited heightened First Amendment protection, and therefore vacated the district court’s judgment in favor of Jack Daniel’s and remanded the case for further proceedings. Specifically, the Ninth Circuit found that the Bad Spaniels dog toy—although “surely not equivalent of the Mona Lisa”—was an “expressive work” because it communicated a “humorous message.” Because of this finding, the Ninth Circuit used the Second Circuit’s framework in Rogers v. Grimaldi to analyze whether the Bad Spaniels dog toy violated the Lanham Act. In Rogers, actress Ginger Rogers claimed that a movie titled “Ginger and Fred” violated Section 1125(a) of the Lanham Act by creating a false impression that the actress had sponsored the movie. The Second Circuit rejected this claim and reasoned that the expressive element of a movie title warranted more protection than the labeling of ordinary commercial products. Thus, the Rogers’ analysis requires a plaintiff claiming trademark infringement to prove not only a likelihood of confusion, but also that the defendant’s use of a trademark is “not artistically relevant to the underlying work” or “explicitly misleads consumers as to the source or content of the work.” On September 15, 2020, Jack Daniel’s filed a petition for a writ of certiorari with the Supreme Court. In its Petition, Jack Daniel’s highlights the Court of Appeals circuit split regarding the treatment of trademark infringement claims when the use of a famous mark in a commercial product is humorous. As the Petition remarks, the Second, Fourth, Fifth, Seventh, Eighth, and Tenth Circuits do not require a heightened analysis for trademark infringement claims with respect to the humorous use of marks in commercial products. Per Jack Daniel's, the Ninth Circuit diverged from these circuits by requiring Jack Daniel’s not only to establish likelihood of consumer confusion for trademark infringement, but also to demonstrate that the use of the mark is either “not artistically relevant to the underlying work” or “explicitly misleads consumers as to the source or content of the work.” As the Petition points out, the Second Circuit has refused to extend the Rogers’ analysis to claims involving the humorous use of a mark to sell a competing product. Although Jack Daniel’s does not argue that the Bad Spaniels dog toy competes with its famous whiskey, nevertheless the whiskey maker argues that the dog toy is sold in such a way that consumers are likely to associate it with Jack Daniel’s. The Petition states that the Bad Spaniels dog toy is sold through several retailers that also sell Jack Daniel’s licensed merchandise, and further, VIP Products’ promotional materials feature the dog toy along with a real Jack Daniel’s bottle, all of which could lead to a false conclusion that the two products are related. The Ninth Circuit sidestepped the commercial product aspect of the dog toy. Instead, relying on Rogers, the Ninth Circuit held that although VIP Products used Jack Daniel’s trade dress and bottle design to sell its Bad Spaniels dog toy, the use was nonetheless “noncommercial” because it conveyed a “humorous message” and therefore was entitled to First Amendment protection. Eyes are on the Supreme Court to see if it weighs in on the issue of whether humorous products are entitled to First Amendment protections, and whether it will extend the Second Circuit’s analysis for trademark infringement claims of “expressive works” to VIP Products’ humorous dog toys.

The TMCA has been covering two pending trademark infringement cases brought by JaM Cellars against The Wine Group’s “Flavor First” line extension of its Franzia brand, and since our last post, there have been two developments of note. In the first case, involving JaM’s claim that the Franzia RICH & BUTTERY Chardonnay infringed JaM’s registered BUTTER mark, Judge Gilliam of the federal district court for the Northern District of California issued an order on April 17, 2020 denying The Wine Group’s motion for summary judgment. After noting that there was “no evidence of actual confusion by consumers,” and perhaps previewing the key issues to be litigated at trial, the Court identified several issues of material fact bearing on the issue of likely confusion that required a jury determination. First, what is the strength of the BUTTER mark, an issue that turns not only on the commercial success of the brand in the marketplace, but also on whether the word “butter” is descriptive or suggestive. Second, whether the parties’ respective wine products should be considered closely related goods or, as The Wine Group contends, materially different because they are sold at different retail price points in different packaging. And third, whether RICH & BUTTERY is being used in a trademark sense as a brand identifier for the wine, as JaM argues or, as The Wine Group contends, as a product descriptor. In a further analysis of The Wine Group’s fair use defense, the Court also found that issues of fact precluded summary judgment. Interestingly though, the Court commented that it “finds some persuasive force in Defendant’s argument that the use of “buttery” instead of “butter” (an adjective instead of a noun) leans in favor of a description….” A further notable comment from Judge Gilliam closed his ruling on the summary judgment motion: “While the Court has some reason to be concerned based on this and other lawsuits that Plaintiff may be effectively attempting to monopolize use of the term ‘buttery’ to describe Chardonnay, summary judgment is not warranted. It remains to be seen whether judgment as a matter of law may be appropriate at or after trial.” Thus, while The Wine Group lost its dispositive motion, it might take some comfort in the Court’s concern about whether JaM is attempting to preclude a competitor from using a descriptive term. In a second development on May 11, 2020, Judge Gilliam entered an order consolidating the RICH & BUTTERY case with the subsequent separate litigation brought by JaM against The Wine Group. The later-field case, which was the subject of our earlier post, involves claims by JaM Cellars that Franzia’s BOLD & JAMMY cabernet sauvignon and packaging infringes JaM Cellars’ rights in its JAM mark. A jury trial that had been scheduled for July has now been pushed back for the consolidated proceedings until December. Stay tuned!