An Evil Bear May Provide High Court TM Ruling Clarification

By Jonathon Hance , Drew Taggart and William Mahoney ( July 7 , 2023 , 5:39 PM EDT )

It may be punny or even funny , but a unanimous U . S . Supreme Court recently decided that the " Bad Spaniels " dog toy brand may infringe and dilute the Jack Daniel ' s Inc . trademark .

The dog toy maker had asserted the decades-old Rogers test precluded the distiller ' s infringement claims . But the Supreme Court held otherwise in Jack Daniel ' s Properties Inc . v . VIP Products LLC .[ 1 ]

Until now , the Rogers test went unaddressed by the Supreme Court . Going forward , if some creative expression is involved in a mark , " when trademarks are used as trademarks — i . e ., to designate source ," a likelihood-of-confusion analysis is the test for trademark infringement .

Jonathan Hance

This case even brought a reconsideration for a previously dismissed case , Diece-Lisa Industries Inc . v . Disney Enterprises Inc . in the U . S . District Court for the Eastern District of Texas , which involved Disney and Lotso the bear from " Toy Story 3 ."

For context , in 1989 , the U . S . Court of Appeals for the Second Circuit established the Rogers test to address a very specific and narrow situation , whether actress Ginger Rogers could sue a movie producer under the Lanham Act for using her name in the title of the film " Ginger and Fred ."[ 2 ]

Drew Taggart

Rogers claimed that the film ' s title misled viewers into thinking that Rogers and her frequent costar Fred Astaire endorsed the film . And there may have been some validity to her thinking , but the Second Circuit disagreed . It held that the film ' s use of her name only posed a slight risk of confusing consumers and that artistic works , such as the film , have an expressive element implicating First Amendment values .[ 3 ]

Rogers was applied by the U . S . Court of Appeals for the Ninth Circuit in Mattel Inc . v . MCA Records Inc ., when Barbie maker Mattel sued the band Aqua for releasing the hit song " Barbie Girl ," because the band was not using the doll ' s name as a source identifier .

William Mahoney

The ruling held that " the use of Barbie in the song title clearly is relevant to the underlying work , namely , the song itself " and "[ t ] he song title does not explicitly mislead as to the source of the work