It may be punny or even funny, but a unanimous Supreme Court has decided that the “Bad Spaniels” dog-toy brand may infringe and dilute the “Jack Daniel’s” trademark.
Last week’s opinion puts an end to the toy maker’s attempt to invoke the Rogers test. The Second Circuit established that test in 1989 as a substitute for the traditional “likelihood of confusion” trademark-infringement test when a brand name (or similar equivalent) is purportedly used for “artistic expression.” Justice Elena Kagan’s opinion limits the application of the Rogers test to evaluating only “non-trademark uses” of a brand, such as references in works of art (perhaps an Andy Warhol soup can) where the name is used in a “non-source-identifying way.” But where a name potentially connects a product with its maker in the mind of a consumer, the traditional trademark-infringement analysis applies—namely, whether there is a likelihood of consumer confusion.
