Doggone it Jack! Dog toy featuring “bathroom humour” sparks trademark claim by Jack Daniels

As reported by Arizona Capitol Times, Jack Daniels is in a dispute with VIP Productions, a dog toy manufacturer, for allegedly infringing its trademark of the “Old No. 7 Tennessee Sour Mash Whiskey” label that appears on its bottles.

The dog toy in question imitates the shape of the Jack Daniels bottle and design of its label. However, the toy’s label reads “The Old No. 2 on your Tennessee Carpet” in place of the original text, and displays “43% Poo by Vol.” and “100% Smelly” where the alcohol percentage would normally be shown.

Jack Daniels brought a lawsuit to stop VIP Productions from producing or selling the toy, which its attorney claims degrades the sophistication of the brand with “juvenile bathroom humour”.

At trial, Jack Daniels was successful in its claim, largely based on evidence that 29% of consumers were under the impression that the whiskey company had a hand in manufacturing the dog toy. However, the 9th Circuit Court of Appeal overturned this decision and found that the humorous message at the heart of the dog toy did not violate the Jack Daniels trademark.

The suit may see further appeal however, as an attorney for Jack Daniels has suggested that the correct legal test, the “likelihood of confusion”, was not properly applied by the 9th Circuit Court.

The ultimate result of this action could have far-reaching effects on VIP Productions, as its website features other dog toys that appear similar to the recognizable bottles of Mountain Dew, Corona, and Heineken.

Authors: Sasha Seeber, 2020/2021 Articling Student-at-law