Bad Spaniels and Jack Daniels – the battle continues

Jack Daniels (or, really, its owner Brown-Forman), sent various cease and desist letters to dog toy maker, Bad Spaniels, over allegations that the name Bad Spaniels infringed the trade mark ‘Jack Daniels’, as well as the US equivalent of passing off (as the toy looked remarkably like the famous Jack Daniels bottle).

Bad Spaniels, tired of receiving these cease and desist letters, issued a claim against Jack Daniels seeking a finding of non-infringement, and to restrain Jack Daniels from issuing further threats.

In a result that surprised many, Bad Spaniels won that claim before the US Appeals Court (9th Circuit). That decision came down to the humorous nature of the toy, which Judge Hurwitz held to be an expression protected by the First Amendment of the US Constitution (freedom of speech).

Jack Daniels now appeals against that finding. It is being widely reported by US lawyers that in order to be successful, Jack Daniels must prove actual confusion, which is a notoriously difficult thing to do. We will have to wait and see if anyone is found who bought a dog toy thinking it was either a bottle of Jack Daniels, or, more likely, being sold by Jack Daniels.

If you have any questions about trade mark infringement or any other intellectual property matter, please get in touch with the team at McDaniels Law on 0191 281 4000, or by email at legal@mcdanielslaw.com.