Comparison of Jack Daniels bottle and Bad Spaniels dog toy

Comparison of Jack Daniels bottle and Bad Spaniels dog toy

By Cameron Bray

On March 22, 2023, the Supreme Court will hear oral arguments[1] in the case of Jack Daniel’s Properties, Inc. v. VIP Products LLC,[2] which will determine the fate of the controversial “Bad Spaniels”[3] rubber dog toy.[4] The Bad Spaniels dog toy was created in 2013 by the Respondent, an Arizona limited liability company in the business of designing and selling dog toys for retail,[5] known commonly as “VIP.”[6]

Besides “Bad Spaniels,”[7] VIP also sells the Tuffy or “Tuffy’s Dog Toy” brand[8] and the “Mighty” line for stronger dogs.[9] The Petitioner, Jack Daniel’s Properties, Inc. is a Delaware corporation, with its principal place of business in California, that owns and licenses the trademarks and trade dress used for wholesale of Jack Daniel’s whiskey.[10]

The Tennessee corn mash whiskey for which Jack Daniel’s is known has been sold domestically since 1875[11] and was halted briefly by Prohibition.[12] At the trial court level, Senior Judge McNamee of the United States District Court for the District of Arizona granted partial summary judgment upon cross-motions of the parties[13] and the court also entered a permanent injunction, enjoining VIP from commercialization (marketing), distribution, or sale of “Bad Spaniels” after a four-day trial without a jury.[14]

Reviewing VIP’s appeal[15] and the trial record for legal conclusions de novo,[16] the United States Court of Appeals for the Ninth Circuit unanimously[17] found that “Like the greeting cards in [Gordon v. Drape Creative, Inc.],[18] the [‘Bad Spaniels’] dog toy, although surely not the equivalent of the Mona Lisa, is an expressive work.”[19] It applied the well-known Rogers[20] test for expressive works under the Lanham Act[21] and held that the Bad Spaniels dog toy was indeed entitled to First Amendment protection.[22]

In terms of First Amendment law[23] and intellectual property (“IP”),[24] Jack Daniel’s Properties, Inc. v. VIP Products LLC is the most important constitutional IP case that the Supreme Court has reviewed since Matal v. Tam[25] six terms ago.[26] It has the power to abrogate Rogers and decide what parodies may be protected under the Free Speech Clause of the First Amendment, which is now in conflict with the two commonly claimed trademark actions under the Lanham Act.[27] If the Court is divided in its opinion, over two dozen amicus briefs have been filed in the case,[28] including from the United States and from corporations such as Nike, Inc., and from nonprofits such as the Foundation for Individual Rights and Expression.[29]

  1. See Adam Liptak, May “Bad Spaniels” Mock Jack Daniel’s? The Supreme Court Will Decide, N.Y. Times (Dec. 5, 2022),; see also Supreme Court of the United States, Docket for 22-148, Jack Daniel’s Props., Inc., Petitioner v. VIP Prods. LLC, (last visited Mar. 8, 2023).

  2. 143 S. Ct. 476 (2022) (granting certiorari to the United States Court of Appeals for the Ninth Circuit). Jack Daniel’s Properties, Inc. v. VIP Products, LLC has been docketed as case number 22-148 by the Supreme Court. See supra note 1.

  3. “In July of 2013, VIP [Products, LLC] introduced the Bad Spaniels squeaker toy. The toy is roughly in the shape of a Jack Daniel’s bottle and has an image of a spaniel over the words ‘Bad Spaniels.’ The Jack Daniel’s label says, ‘Old No. 7 Brand Tennessee Sour Mash Whiskey’; the label on the Bad Spaniels toy instead has the phrase ‘the Old No. 2, on your Tennessee Carpet.’ A tag affixed to the Bad Spaniels toy states that the ‘product is not affiliated with Jack Daniel Distillery.’” VIP Prods. LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170, 1172 (9th Cir. 2020) (reviewing the United States District for the District of Arizona’s grant of summary judgment).

  4. “In 2014, [Jack Daniel’s Properties, Inc., or “JDPI”] ‘demand[ed] that VIP [Products LLC] cease all further sales of the Bad Spaniels toy.’ VIP responded by filing this action, seeking a declaration that the Bad Spaniels toy ‘does not infringe or dilute any claimed trademark rights’ of JDPI and that Jack Daniel’s trade dress and bottle design are not entitled to trademark protection. The complaint also sought cancellation of the Patent and Trademark Office registration for Jack Daniel’s bottle design. JDPI counterclaimed, alleging state and federal claims for infringement of JDPI’s trademarks and trade dress, and dilution by tarnishment of the trademarks and trade dress.” Id. at 1172–1173 (internal citations omitted).

  5. Complaint, VIP Prods. LLC v. Jack Daniel’s Props., Inc., 2014 WL 4913256 (D. Ariz. Sept. 16, 2014) (No. 2:14CV02057).

  6. “VIP Products sells the ‘Bad Spaniels Silly Squeaker’ dog toy, which resembles a bottle of Jack Daniel’s Old No. 7 Black Label Tennessee Whiskey, but has light-hearted, dog-related alterations. For example, the name ‘Jack Daniel’s’ is replaced with ‘Bad Spaniels,’ ‘Old No. 7’ with ‘Old No. 2,’ and alcohol content descriptions with ‘43% POO BY VOL.’ and ‘100% SMELLY.’ After Jack Daniel’s Properties, Inc. (‘JDPI’’) demanded that VIP cease selling the toy, VIP filed this action, seeking a declaration that the toy did not infringe JDPI’s trademark rights or, in the alternative, that Jack Daniel’s trade dress and bottle design were not entitled to trademark protection. JDPI counterclaimed, asserting trademark infringement and dilution.” VIP Prods. LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170, 1172 (9th Cir. 2020) (reversing judgment on the dilution claim, ordering vacatur on trademark infringement, and remanding for further proceedings in light of the First Amendment interests owed to “Bad Spaniels”).

  7. See supra notes 3–5.

  8. See, e.g., VIP Products LLC, Tuffy® Aliens: Alien Green,, (last visited Mar. 8, 2023).

  9. See, e.g., Vip Products, MIGHTY – Safari Elephant – Squeaker-Multiple Layers,, Inc., (last visited Mar. 8, 2023). “Mighty dog toys rethink durability and approach it from a new angle.  Durability is created for each toy with multiple layers of flexible materials that move with the dog’s teeth instead of tearing . . .  These toys may seem plush on the outside, but all the durability features are internal making these toys soft, yet MIGHTY strong.  Please be a responsible dog owner and only allow your dog to play with the toy under supervision.” Id.

  10. Answer and Counterclaims of Defendant and Counterclaimant, VIP Prods. LLC v. Jack Daniel’s Props., Inc., 2014 WL 12936100 (D. Ariz. Dec. 3, 2014) (No. CV 14-02057). See also Jack Daniel’s Properties, Inc., Born to Make Whiskey, Our Story, (last visited Mar. 8, 2023).

  11. “Since 1875, Jack Daniel’s Tennessee whiskey has borne the registered trademarks JACK DANIEL’S and OLD NO. 7. Jack Daniel’s also has a registered trademark for its three-dimensional configuration of a square-shaped bottle with the embossed signature of ‘Jack Daniel’ . . . Approximately 98% of consumers expressed awareness of the Jack Daniel’s Brand.” Petition for a Writ of Certiorari at 9, Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 2022 WL 3561781 (S. Ct. Aug. 5, 2022) (No. 22-148).

  12. See U.S. Const. amend. XVIII (repealed by the Twenty-first Amendment, effective Dec. 5, 1933).

  13. VIP Prods. LLC v. Jack Daniel’s Props., Inc., 2016 WL 5408313, at *1–2 (D. Ariz. Sept. 27, 2016) (No. CV-14-2057).

  14. See VIP Prods. LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170, 1173, 1176 (9th Cir. 2020) (vacating the permanent injunction against appellant, inter alia).

  15. Id. at 1173 (citing 28 U.S.C. § 1291).

  16. Id. at 1173–75 (citations omitted).

  17. Judge Hurwitz delivered the opinion of the court, and Judges Miller and Tashima concurred. See id. at 1171–72.

  18. 909 F.3d 257 (9th Cir. 2020). There was no petition or order for a rehearing en banc in the Ninth Circuit, and the Court granted Jack Daniel’s petition for a writ of certiorari after the Ninth Circuit affirmed the lower court’s grant of summary judgment. See supra note 2; VIP Prods. LLC v. Jack Daniel’s Props., Inc., 2021 WL 5710730 (D. Ariz. Oct. 8, 2021) (No. CV-14-020507) (reviewing the matter on remand and granting summary judgment to VIP), aff’d, VIP Prods. LLC v. Jack Daniel’s Props., Inc., 2022 WL 1654040 (9th Cir. Mar. 18, 2022) (No. 21-16969).

  19. VIP Prods. LLC, 953 F.3d at 1175.

  20. See Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989) (“We believe that in general the [Lanham] Act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. In the context of allegedly misleading titles using a celebrity’s name, that balance will normally not support application of the Act unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.”).

    The Rogers test was adopted by the Ninth Circuit in the case of Mattel, Inc. v. MCA Records, Inc., 296 F.3d 849 (9th Cir. 2022). “[The Rogers court] concluded that literary titles do not violate the Lanham Act ‘unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.’ We agree with the Second Circuit’s analysis and adopt the Rogers standard as our own.” Id. at 902 (internal citations omitted) (opinion of Kozinski, J.) (finding that MCA Records, Inc.’s use of BARBIE in its song “Barbie Girl” was a parody entitled to First Amendment rights).

  21. 15 U.S.C. § 1051 et seq. Trademark infringement is a cause of action under 15 U.S.C. § 1114. Trademark dilution (by tarnishment or “blurring” a mark) is an additional cause of action under 15 U.S.C. § 1125. Fair use is codified as a legal defense under 15 U.S.C. § 1115 for when a trademark is registered nationally. See id. § 1115(b)(4).

  22. “We affirm the district court’s summary judgment in favor of JDPI on the issues of aesthetic functionality and distinctiveness. However, because the Bad Spaniels dog toy is an expressive work entitled to First Amendment protection, we reverse the district court’s judgment on the dilution claim, vacate the judgment on trademark infringement, and remand for further proceedings.” VIP Prods. LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170, 1172 (9th Cir. 2020).

  23. The Free Speech Clause is included in the First Amendment to the United States Constitution and generally protects commercial speech from abridgement or censorship: “Congress shall make no law respecting an establishment of religion, or prohibiting the free exercise thereof; or abridging the freedom of speech, or of the press; or the right of the people peaceably to assemble, and to petition the Government for a redress of grievances.” U.S. Const. amend. I; see David Schultz, Commercial Speech, The First Amendment Encyclopedia, (last visited Mar. 8, 2023).

  24. Trademark is classified as “intellectual property,” but it draws its constitutional power from the Commerce Clause. See U.S. Const. art. I, § 8, cl. 3; The Trade-Mark Cases, 100 U.S. 82 (1879) (holding that Congress lacked power under the “Intellectual Property Clause” of Article I, § 8, cl. 8 to provide for trademark protection). “[The Congress shall have power . . .] To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes.” U.S. Const. art. I, § 8, cl. 3 (emphasis added).

  25. 582 U.S. 218 (2017).

  26. The Matal Court invalidated a provision of the Lanham Act that prohibited the registration of “disparaging” or offensive trademarks. See id. at 223 (holding unconstitutional 15 U.S.C. § 1052(a)). Matal concerned an Asian-American rock band called “The Slants,” who were denied federal trademark registration because their mark was a derogatory term. Id. “But the band members believe that by taking that slur as the name of their group, they will help to “reclaim” the term and drain its denigrating force . . . We now hold that [§ 1052(a)] violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” Id.

  27. See Petition for a Writ of Certiorari at I, Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 2022 WL 3561781 (S. Ct. Aug. 5, 2022) (No. 22-148) (Questions Presented: “1. Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims. 2. Whether humorous use of another’s mark as one’s own on a commercial product is ‘noncommercial’ under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act.”); see also Dorsney & Whitney LLP, So, Nine Justices Walk into a Bar . . . SCOTUS to Consider Role of Humor in Infringement and Dilution Claims, JDSUPRA (Jan. 9, 2023),

  28. Supreme Court of the United States, Docket for 22-148, Jack Daniel’s Props., Inc., Petitioner v. VIP Prods. LLC, (last visited Mar. 8, 2023).

  29. See SCOTUSBlog, Jack Daniel’s Properties, Inc. v. VIP Products LLC, Cases, (last visited Mar. 8, 2023) (listing amici briefs).

By Mary-Kathryn Hawes

Glossier, a millennial favorite beauty brand, is attempting to trademark its signature “millennial pink” used on the pink bubble-wrap pouches that their products arrive in.  Emily Weiss (who millennials may recall had a brief stint on the popular MTV series “The Hills” as the Teen Vogue New York intern[1]) parlayed her successful beauty blog into Glossier, an independent beauty company valued at over $1.2 billion.[2]  Launched in 2014, Glossier is somewhat unique for not only surpassing the ever-popular Kylie Cosmetics in value,[3] but Glossier also raised nearly $200 million in venture capital investments to date.[4]

With this meteoric rise, Glossier has sought to protect its intellectual property rights, receiving trademarks for their crowd favorite products Boy Brow and Balm Dotcom in 2017[5] and 2019,[6] respectively. On 09 May 2019,[7] Glossier filed a § 1(a) application to register their signature pink zip-top, bubble-wrap pouches as a trademark.[8] Specifically, Glossier described the mark as consisting “of the color pink and a translucent circle patterns displayed on the bag are claimed as a feature of the mark which is displayed on bags.”[9]

Trademark Primer

Trademarks include “any word, name, symbol, or device, or any combination thereof . . . to identify and distinguish his or her goods.”[10]  Thus, trademarks primarily serve as source identifiers.[11] While the traditional trademark may be a word or design mark, the Lanham Act also extends trademark protection to trade dress, which can include features such as size, shape, and color, among others.[12] Marks that are inherently distinctive, whose “intrinsic nature serves to identify a particular source of a product”, are eligible for registration on the Principal Register.[13]

Conversely, other marks, such as those that are merely descriptive[14] or merely a surname[15], are eligible for registration on the Principal Register once the applicant demonstrates that the mark has become “distinctive of the applicant’s goods in commerce.”[16] For example, the mark “ORANGE” used for an orange stand is merely descriptive because it describes a characteristic of the good.[17] The mark does not immediately signify source to a consumer. However, over time, such descriptive marks can come to signify source[18] and thus, the mark can become eligible for registration on the Principal Register with a showing of acquired distinctiveness, or secondary meaning. Five years of continuous use in commerce provides prima facie evidence that the mark has acquired distinctiveness.[19]

As noted in the seminal case of Qualitex v. Jacobson, marks that consist of a color cannot be inherently distinctive and require proof of secondary meaning.[20] While color doesn’t immediately signify source to consumers, over time, colors can become source identifiers. Thus, colors are eligible for trademark registration if the color is not functional[21] and is shown to have secondary meaning in connection with the applicant’s goods or services.[22]

After an applicant files for trademark registration, the examining attorney at the United States Patent and Trademark Office (PTO) examines the mark and issues a response to the applicant within 6–12 months. The examining attorney can either permit the mark to be registered on the Principal Register or notify the applicant in writing of the statutory grounds for rejection.[23] Generally, the applicant has six months to respond to this initial office action.[24] After reviewing the applicant’s response, the examining attorney will either publish the mark for registration[25] or issue a second, final office action rejecting the mark.[26]

Glossier’s Trademark Battle

In the initial office action issued on 24 July 2019, the United States Patent and Trademark Office refused registration of the mark because it appeared to be a functional design for the packaging.[27] While Glossier claimed the “translucent circle patterns” as a feature of the mark, the examining attorney found in the examination of the submitted sample that the circles were air bubble cushioning.[28] Because the bubble wrap served a protective feature for the goods stored within, the examining attorney found that “a central feature of applicant’s bags has a specific utilitarian advantage.”[29]

Further, the examining attorney attached an Amazon webpage for bubble wrap mailing envelopes that are used for protecting items as a similar item to Glossier’s zip-top pouches.[30]  Finding that the mark was not inherently distinctive, the examining attorney found that the mark was not eligible for registration on the Principal Register without proof of acquired distinctiveness.[31]

On 23 January 2020, Glossier filed their response to the initial office action, arguing that the proposed mark “consists of the claimed color pink as applied to a very particular type and configuration of product packaging . . . the air bubbles and the packaging itself are not claimed as features of the mark.”[32] Thus, Glossier is seeking to just trademark the color millennial pink on the pouches and not the air bubbles.[33] While this argument likely gets rid of the functionality bar to their registration, Glossier must still prove that millennial pink has gained secondary meaning.[34]

Given that Glossier claims a first use date of 06 October 2014, Glossier first made a § 2(f) claim in their response that they have acquired distinctiveness.[35] Further, Glossier argues that the color pink is not functional, given that there is no distinct advantage to making the packaging pink and there are other colors available for competitors to use on their packaging.[36] Thus, Glossier argues that the only remaining factor is whether the color pink, as a mark, has acquired distinctiveness.[37]

Whether a mark has acquired distinctiveness is a fact-specific inquiry. The Trademark Manual of Examining Procedure provides a nonexclusive list of different types of evidence that used in the past to prove secondary meaning:

  • Long Use of the Mark in Commerce[38]
  • Advertising Expenditures[39]
  • Affidavits or Declarations Asserting Recognition of Mark as Source Indicator[40]
  • Survey Evidence, Market Research, and Consumer Reaction Studies[41]
  • Parodies and Copies[42]

“No single evidentiary factor is determinative.”[43] In its response, Glossier used these factors to argue that the pink pouch has acquired distinctiveness. 

First, Glossier points out that the mark has been used continuously since 2014 and in 2018, sales under the mark generated more than $100 million in revenue.[44] Glossier also attached 98 sworn declarations from Glossier customers who attested that they “immediately recognize the color pink as applied to the Glossier Pink Pouch indicates that the cosmetics and skincare products originate from Glossier and not from any other source.”[45]

Additionally, Glossier attached exhibits demonstrating their advertising and marketing of the pink pouch.[46] Interestingly, as evidence of the applicant’s success in educating the public to associate the proposed mark with a single source, Glossier pointed to third party social media posts.[47] Consumers post and tag images of their Glossier pink pouches, which Glossier argues simultaneously demonstrates that consumers already associate the pink pouch with Glossier and reinforces the connection between Glossier and the pink pouch.[48]

Glossier also provided evidence of unsolicited media coverage, linking various articles touting the “most notorious” and “popular” pink pouch.[49] Given that the existence of parodies and copies of the proposed mark can be evidence of secondary meaning, Glossier pointed to Jimmy Choo’s 2016 pink handbag that resembled pink bubble wrap.[50] Glossier noted that many fashion insiders believed that Jimmy Choo’s handbag was intended to mimic Glossier’s pink pouch.[51]

Ultimately, Glossier asserted that the “abundance of evidence demonstrates that the color pink, as applied to bags featuring lining of translucent circular air bubbles and a zipper closure, has acquired source-indicating significance in the minds of the relevant consumers. When consumers see the Pink Pouch, they immediately recognize it as emanating from Glossier.”[52] Thus, Glossier contends that their mark is eligible for registration on the Principal Register with a claim of secondary meaning.[53]

What Happens Next:

After the examining attorney reviews Glossier’s response, the attorney will either issue a second, likely non-final rejection or publish the mark for opposition if Glossier successfully argues that millennial pink serves as a source identifier.

Ultimately, it’s up to the PTO to determine whether millennial pink serves as a source identifier, and thus, is eligible for trademark registration. Regardless of the outcome, there is at least one important takeaway from Glossier’s quest to trademark the millennial pink as used in conjunction with their pink pouch.

Glossier’s proposed trademark underscores the importance of social media in analyzing secondary meaning in this increasingly digital age. Glossier explicitly used evidence of third-party social media posts to demonstrate their advertising and marketing. Unsurprisingly, the pouch is “Instagrammable” and these micro-impressions created by the social media posts all contribute to the pink pouch becoming a source identifier in the minds of consumers. As we move into an increasingly digital age, the PTO will likely continue to see these creative arguments.

[1] Jonah Waterhouse, Fashion Stars You Completely Forgot Cameoed in ‘The Hills,’ Harper’s Bazaar (Jan. 10, 2018, 11:13 PM),

[2] Bridget March, Glossier is Now Valued at More Than $1.2 Billion, Harper’s Bazaar (Mar. 20, 2019),

[3] #2 Kylie Jenner, Forbes, (last updated Feb. 17, 2020) (noting that Kylie Cosmetics is currently worth at least $900 million).

[4] Kate Clark, Glossier Triples Valuation, Enters Unicorn Club With $100M Round, TechCrunch (Mar. 19, 2019, 1:17 PM),

[5] BOY BROW, Registration No. 5,170,111.

[6] BALM DOTCOM, Registration No. 5,646,307.

[7] Unfortunately, 09 May 2019 was a Thursday, not a Wednesday.

[8] U.S. Trademark Application Serial No. 88/422,357 (filed May 09, 2019).

[9] Id.

[10] 15 U.S.C. § 1127 (2018).

[11] Id. See also New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 305 n.2 (9th Cir. 1992) (“In economic terms, trademarks reduce consumer search costs by informing people that trademarked products come from the same source.”).

[12] § 1127. See also Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964 , 977 (10th Cir. 2002) (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992)).

[13] Two Pesos, 505 U.S. at 768.

[14] 15 U.S.C. § 1052(e)(1) (2018).

[15] 15 U.S.C. § 1052(e)(4) (2018).

[16] 15 U.S.C. § 1052(f) (2018).

[17] Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).

[18] See,e.g., Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163 (1995).

[19] § 1052(f).

[20] Qualitex, 514 U.S. at 163.

[21] The functionality doctrine forbids use of a product’s feature as a trademark when doing so will put a competitor at a significant, non-reputational disadvantage because the feature is either essential to the use or purpose of the article or it affects the cost or quality of the good or service. Id. at 169.

[22] TMEP § 1202.05 (Oct. 2018).

[23] TMEP § 705 (Oct. 2018).

[24] TMEP § 705.08 (Oct. 2018).

[25] TMEP § 713 (Oct. 2018).

[26] TMEP § 714.03 (Oct. 2018). Notably, the second office action is typically a final office action. However, if an applicant raises a claim of acquired distinctiveness in their response to the initial office action, then the applicant has generally presented a new issue. TMEP § 714.05(a)(i) (Oct. 2018). Thus, if the examining attorney finds that the response still does not overcome the grounds of refusal, then the examining attorney should issue another non-final office action. Thus, it is possible for applicants to receive more than two office actions. TMEP § 715.03(b) (Oct. 2018).

[27] Office Action Outgoing, United States Patent & Trademark Office (July 24, 2019),

[28] Id.

[29] Id.

[30] Id.

[31] Id.

[32] Response to Office Action, United States Patent & Trademark Office (Jan. 23, 2020),

[33] Id.

[34] Id.

[35] Id.

[36] Id.

[37] Id.

[38] TMEP § 1212.06(a) (Oct. 2018).

[39] TMEP § 1212.06(b) (Oct. 2018) (noting that while large scale advertising expenditures are significant to indicate use of the mark, “[t]he ultimate test in determining whether a designation has acquired distinctiveness is applicant’s success, rather than its efforts, in educating the public to associate the proposed mark with a single source”).

[40] TMEP § 1212.06(c) (Oct. 2018) (“[S]urvey[s] must show that the consuming public views the proposed mark as an indication of the source.”).

[41] TMEP § 1212.06(d) (Oct. 2018).

[42] TMEP § 1212.06(e)(vi) (Oct. 2018).

[43] TMEP § 1212.06 (Oct. 2018).

[44] Response to Office Action, United States Patent & Trademark Office (Jan. 23, 2020),

[45] Id.

[46] Id.

[47] Id.

[48] Id.

[49] Id.

[50] Id.

[51] Id.

[52] Id.

[53] Id.

image by skeeze from Pixabay

By Laura Jordan

A few years ago, the federal government dissected a certain four-letter word.[1] It was prodded to see if it would “shock . . . the sense of truth, decency, or propriety” of the American public.[2] It was weighed to determine if it would “giv[e] offense to the conscience or moral feelings.”[3] And it was placed under the microscope to judge its “disgraceful[ness]” and “offensive[ness].”[4] That four-letter word survived the scrutiny and is alive and kicking today.[5] In fact, it was the scrutiny measures themselves that ultimately received the knife, cut out as unconstitutional by the Supreme Court over the summer.[6]

The four-letter word under debate was not one of the typical variety tossed around in casual settings, but it was close enough.[7] Plaintiff Erik Brunetti was trying to trademark the name “FUCT” as the title of his clothing brand.[8] He claimed that the four letters were to be pronounced individually, as in “F-U-C-T.”[9] However, as Justice Kagan pointed out in the majority opinion, “[Y]ou might read it differently and, if so, you would hardly be alone.”[10] The U.S. Patent and Trademark Office (PTO) certainly did, and they rejected Brunetti’s application.[11]

The PTO’s statutory authority to govern the trademark registration process is found in the Lanham Act, which is codified in 15 U.S.C. §§ 1051 et seq.[12] Under § 1051, the PTO is allowed to subject the proposed trademark to scrutiny under the “factors set forth in subsections (a) through (e)” within § 1052.[13] In particular, § 1052(a) allowed the PTO to scrutinize whether the proposed trademark “comprise[d] immoral . . . or scandalous matter.”[14] If so, the trademark could be rejected.[15] The PTO decided that FUCT fit squarely within the proscribed category, deploring it as “highly offensive,” “vulgar,” and sexually reprehensible.[16] Brunetti pushed back against the rejection and won in the Court of Appeals for the Federal Circuit. The circuit court found that the PTO’s ban against “immoral, deceptive, or scandalous matter” was not in line with the First Amendment.[17]

The Supreme Court then took the statutory phrase under consideration, turning to its 2017 decision in Matal v. Tam[18] for guidance.[19] In Matal, the Court examined whether the PTO could refuse registration to trademarks that “‘disparage’ any ‘person[], living or dead’” within § 1052(a).[20] Simon Tam, of the band “The Slants,” had fought a lengthy battle to trademark the band’s name in order “to ‘reclaim’ and ‘take ownership’ of stereotypes about people of Asian ethnicity.”[21] However, the PTO rejected the trademark, reasoning that “the fact that an applicant may be a member of that group or has good intentions underlying its use of a term does not obviate the fact that a substantial composite of the reference group would find the term objectionable.”[22] Ultimately, the Court decided that “if a trademark registration bar is viewpoint-based, it is unconstitutional” and that the PTO’s “disparagement bar was viewpoint-based.”[23]

With that holding in mind, the Court reasoned that “if the ‘immoral or scandalous’ bar similarly discriminates on the basis of viewpoint, it must also collide with our First Amendment doctrine.”[24] Looking to dictionary definitions of “immoral” and finding results such as “inconsistent with rectitude, purity, or good morals,” the majority found that this statutory language is entirely viewpoint-based.[25] It upholds “conventional moral standards” while rejecting as impure other ideas that may not be as mainstream.[26] The Court lightheartedly pointed out that a mark such as “ALWAYS BE CRUEL” would not survive this scrutiny.[27] In the past, the PTO has taken the traditional side of morally-contested arguments, rejecting drug-positive trademarks such as “YOU CAN’T SPELL HEALTHCARE WITHOUT THC” and “BONG HITS 4 JESUS” while registering “SAY NO TO DRUGS—REALITY IS THE BEST TRIP IN LIFE.”[28] Thus, the immoral-or-scandalous bar, as written, allowed the government to approve some viewpoints over others.[29]

In arguing that the immoral-or-scandalous bar is constitutionally sound, the Government attempted to narrow the phrase to only “marks that are ‘vulgar’—meaning ‘lewd,’ ‘sexually explicit or profane.’”[30] If it were so narrow, then it would be constitutionally sound.[31] But the majority rejected this reasoning and found that the phrase encompasses much more:

It covers the universe of immoral or scandalous—or (to use some PTO synonyms) offensive or disreputable—material. Whether or not lewd or profane. Whether the scandal and immorality comes from mode or instead from viewpoint. To cut the statute off where the Government urges is not to interpret the statute Congress enacted, but to fashion a new one.[32]

In striking down the statutory phrase, the majority therefore paved the way for the “FUCT” trademark.[33]

So, with this decision, can Americans now trademark whatever the FUCT they want to? Justice Sotomayor seemed to worry about that perhaps unintended consequence.[34] In her concurrence in part and dissent in part, she wrote,

The Court’s decision today will beget unfortunate results. With the Lanham Act’s scandalous-marks provision, 15 U.S.C. § 1052(a), struck down as unconstitutional viewpoint discrimination, the Government will have no statutory basis to refuse (and thus no choice but to begin) registering marks containing the most vulgar, profane, or obscene words and images imaginable.[35]

However, Justice Alito stood up in his concurrence for the sanctity of free speech, arguing that “[a]t a time when free speech is under attack, it is especially important for this Court to remain firm on the principle that the First Amendment does not tolerate viewpoint discrimination.”[36]

Whichever side you are on, now might be the best time to go get that trademark registered.

[1] See Iancu v. Brunetti, 139 S. Ct. 2294, 2297 (2019).

[2] Id. at 2298.

[3] Id.

[4] Id.

[5] Id. at 2302.

[6] Id.

[7] Id. at 2297.

[8] Id.

[9] Id.

[10] Id.

[11] Id.

[12] Id.

[13] 15 U.S.C. § 1051(d)(1) (2012).

[14] § 1052(a).

[15] § 1051(d)(1).

[16] Brunetti, 139 S. Ct. at 2298.

[17] Id.

[18] See generally 137 S. Ct. 1744 (2017).

[19] Brunetti, 139 S. Ct. at 2298.

[20] Id.

[21] Matal, 137 S. Ct. at 1754.

[22] Id.

[23] Brunetti, 139 S. Ct. at 2299.

[24] Id.

[25] Id.

[26] Id. at 2300.

[27] Id.

[28] Id.

[29] Id. at 2301.

[30] Id.

[31] Id.

[32] Id. at 2301–02.

[33] Id.

[34] Id. at 2308 (Sotomayor, J., concurring in part and dissenting in part).

[35] Id.

[36] Id. at 2303–04 (Alito, J., concurring).

By Cole Tipton

SummitBridge National v. Faison

In this bankruptcy action, SummitBridge National (“National”) appeals the district court’s holding that it is barred from claiming attorney’s fees incurred after a bankruptcy petition was filed.  The contract between National and Ollie Faison (“Faison”) stated that Faison would pay “all costs of collection, including but not limited to reasonable attorneys’ fees.”  The Fourth Circuit reversed the district court’s holding and stated that the Bankruptcy Code does not preclude contractual claims to attorney’s fees that were guaranteed by a pre-bankruptcy contract.  The determination of the district court was reversed and remanded for further proceedings.

US v. Pratt

In this criminal action, Samual Pratt (“Pratt”) appeals his conviction of various counts of sex trafficking and child pornography due to evidentiary errors.  Pratt contends the district court should have suppressed evidence from his cellphone and should not have admitted certain hearsay statements.  First, the Fourth Circuit held that it was reversible error to admit evidence from Pratt’s cellphone because the phone was seized without consent and the government waited thirty-one days before obtaining a search warrant.  The Court stated that such a delay was unreasonable.  Second, the Fourth Circuit held that an unavailable witness’s hearsay statements were admissible because Pratt had procured the witness’s unavailability through phone calls and threats.  Accordingly, the Fourth Circuit vacated Pratt’s convictions on the two counts prejudiced by the cell phone evidence, vacated his sentence, and remanded.

Parker v. Reema Consulting Services, Inc 

In this civil action, Evangeline Parker (“Parker”) appeals the district court’s dismissal of her complaint against her employer, Reema Consulting Services, Inc. (“Reema”).  The central issue of the appeal was whether a false rumor circulated by Reema that Parker slept with her boss for a raise could give rise to liability under Title VII for discrimination “because of sex.”  The Fourth Circuit held that because the complaint alleged Reema spread the rumor and acted on it by penalizing the employee, a cognizable claim for discrimination “because of sex” was alleged.  The district court’s dismissal was reversed.

US Dep’t of Labor v. Fire & Safety Investigation

In this civil action, Fire & Safety Investigation Consulting Services, LLC (“Fire & Safety”) appealed the district court’s determination that they violated the Fair Labor Standards Act (“FLSA”) for failing to pay overtime compensation.  Fire & Safety uses an alternative work schedule for its employees in which an employee works 12 hours per day for 14 days and then receives 14 days off.  Because employees under this plan will work 88 hours in one work week, Fire & Safety pays its employees a blended rate for all 88 hours that is supposed to account for the 48 hours of overtime worked, rather than paying 40 hours of standard pay plus 48 hours of overtime.  The Fourth Circuit held that this blended rate fails to observe the formalities required by the FLSA which requires all overtime hours be recorded and paid at one and one-half times the standard rate of pay for all hours worked over 40.  Accordingly, the Fourth Circuit affirmed the district court’s judgment, including over $1.5 million in back wages and liquidated damages.

Trana Discovery, Inc. v. S. Research Inst.

In this civil action, Trana Discovery, Inc. (“Trana”) brought a fraud and negligent misrepresentation action against Southern Research Institute (“Southern”).  Trana alleged that Southern had provided false data in research reports of a new HIV medication it was researching.  The district court granted summary judgment for Southern on both claims.  The Fourth Circuit upheld the grant of summary judgement, stating that there was no genuine dispute of material fact due to an insufficiency of evidence regarding damages and the standard of care Southern was exacted to.  Accordingly, summary judgement was affirmed.

Jesus Christ is the Answer v. Baltimore County, Maryland

In this civil action, Jesus Christ is the Answer Church (“Church”) brought an action alleging violation of the First Amendment’s Free Exercise Clause, the Fourteenth Amendment’s Equal Protection Clause, the Maryland Declaration of Rights, and the Religious Land Use and Institutionalized Person Act.  Church alleged that Baltimore County, Maryland (“Baltimore”) had infringed upon their State and Federal rights by denying their modified petition for zoning variances to establish a church.  Several neighbors, who had expressed open hostility towards Church, opposed the petition.  After the petition was denied, Church filed an action in district court which was dismissed for failure to state a claim.  On appeal, the Fourth Circuit reversed and remanded because Church’s complaint contained facts sufficient to state a claim that was “plausible on its face.”  The Fourth Circuit held that the neighbors apparent religious bias towards Church was sufficient to plead a plausible Constitutional claim and violation of the Religious Land Use Act. 

Curtis v. Propel Property Tax Funding

In this civil action, Garry Curtis (“Curtis”) brought a suit on behalf of himself and similarly situated individuals against Propel Property Tax Funding (“Propel”), alleging violations of the Truth in Lending Act, the Electronic Funds Transfer Act, and the Virginia Consumer Protection Act.  Propel was engaged in the practice of lending to third parties to finance payment of local taxes.  The district court denied Propel’s motion to dismiss and certified two interlocutory questions.  Propel appealed, asserting that Curtis did not have standing and that he failed to state a claim for relief.  The Fourth Circuit upheld the district court’s ruling, finding that: 1) Curtis had standing because he was personally subject to the harms these consumer protection statutes were designed to protect against; and 2) Curtis had sufficiently pled violations of the lending acts because Propel was conducting consumer credit transactions.

US v. Charboneau

In this civil action, Blake Charboneau (“Charboneau”) challenges the determination that he is a “sexually dangerous person” under the civil commitment provisions of the Adam Walsh Child Protection and Safety Act of 2006.  The district court held that Charboneau was a “sexually dangerous person” within the meaning of the act and committed him to the custody of the Attorney General.  On appeal, Charboneau raised two issues: 1) whether he must be diagnosed with a paraphilic disorder to be committed under the act; and 2) if the record supported the district court’s findings.  The Fourth Circuit affirmed the district court’s judgment, holding that an actual diagnosis was not necessary under the act and the record was sufficient under a clear error standard of review.

US v. Johnson

In this criminal action, Willie Johnson (“Johnson”) appealed a district court’s order to resentence him for bank robbery under the sentencing recommendation in his original plea agreement.  Johnson argued that the government’s original agreement not to seek a mandatory life sentence under the federal three-strikes law was not beneficial because his prior state crimes should not be counted for federal three-strikes treatment.  The Fourth Circuit held that state crimes are encompassed by the three-strikes program and the district court’s decision to honor the original sentencing recommendation was affirmed.

Mountain Valley Pipeline, LLC v. 6.56 Acres of Land

In this civil action, owners of 6.56 acres of land appealed a district court judgement granted Mountain Valley Pipeline, LLC (“Pipeline”) a preliminary injunction for access and possession of property it was acquiring through eminent domain.  The Fourth Circuit reviewed the district court’s application of the test set forth in Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7, 20 (2008) for preliminary injunctions.  In doing so, the Court found that Pipeline had established it was likely to succeed on the merits, would suffer irreparable harm, the balance of equities was in its favor, and that an injunction served the public interest.  Accordingly, the district court was affirmed. B.V. v. US Patent & Trademark

In this civil action, and the U.S. Patent and Trademark Office (“USPTO”) appeal the district court’s grant of summary judgment protecting the trademark BOOKING.COM. appeals the district court’s grant of attorney’s fees to the USPTO, and the USPTO appeals the court’s decision that BOOKING.COM is protectable.  The Fourth Circuit held that BOOKING.COM is not generic and can be registered as a descriptive mark with secondary meaning.  Moreover, the Court upheld the grant of USPTO’s expenses because the Lanham Act requires a party to pay “all the expenses of the proceeding” when a USPTO decision is appealed to the district court.  Thus, the district court’s judgment was affirmed.

US v. Jones

In this criminal action, James Eric Jones (“Jones”) appeals the district court’s denial of a motion to vacate, set aside, or correct his sentence.  Jones was originally sentenced under the Armed Career Criminal Act (“ACCA”) which requires a mandatory fifteen-year minimum sentence for defendants with at least three prior violent felony convictions.  However, Jones claims that he does not qualify for sentencing under the act because his South Carolina conviction for assaulting, beating, or wounding a police officer is not a violent conviction as defined by the ACCA.  The Fourth Circuit held that assaulting, beating, or wounding a police officer does not qualify under the ACCA because it includes conduct that does not involve violent physical force. Therefore, the district court’s judgment was vacated and remanded.

By Ali Fenno

On February 21, 2017, the Fourth Circuit issued a published opinion in the civil case of vonRosenberg v. Lawrence. In vonRosenberg, the Fourth Circuit addressed whether the district court abused its discretion by staying a federal proceeding until the conclusion of a similar state action involving different parties and claims. After examining the abstention standard from Colorado River Water Conservation District v. United States, the Fourth Circuit vacated the abstention order and remanded the case back to the district court, holding that the district court abused its discretion by abstaining in favor of state court proceedings that were not parallel to the federal court proceedings.


Both this federal proceeding and the related state proceeding concerned whether the Diocese of South Carolina (the “Diocese”) dissociated itself from the Protestant Episcopal Church in the United States (the “Episcopal Church”). Bishop vonRosenberg, the federal plaintiff-appellant, claims that the Episcopal Church appointed him as Bishop of the Diocese after removing Bishop Lawrence, the federal defendant-appellee, from the position. But Bishop Lawrence contends that the Episcopal Church could not have removed him because the Diocese of South Carolina had dissociated from the Episcopal Church and acted independently of the organization. Thus, each party claimed to be the Bishop of the Episcopal Church in South Carolina.

State Claim

Litigation over the dissociation matter first began when the Diocese filed suit against the Episcopal Church in a South Carolina state court, claiming that the Diocese had dissociated from the Episcopal Church and sought “resolution of their real and personal property rights.” The Episcopal Church then counterclaimed for trademark infringement and dilution under the Lanham Act. It also requested that Bishop Lawrence and others be added as counterclaim defendants, but the state trial court denied the request in September 2013.

The state court issued its final order on February 3, 2015. It held that the Diocese had validly dissociated from the Episcopal Church and owned the property at issue, and permanently enjoined the Episcopal Church from using the Diocese’s marks. The Episcopal Church appealed, and the South Carolina Supreme Court heard oral arguments on September 23, 2013. No opinion from the state supreme court has yet been issued.

Federal Claim

Bishop vonRosenberg filed this federal action on March, 13, 2013, seeking declaratory-injunctive relief against Bishop Lawrence. He claimed that Bishop Lawrence violated the Lanham Act by falsely advertising himself as the Bishop of the Diocese. But the district court abstained the proceeding in favor of the state court proceedings in August 2013. The court reasoned that it had broad authority to decline jurisdiction on cases seeking declaratory relief. On appeal, the Fourth Circuit vacated the abstention order on the grounds that the district court had applied the wrong abstention standard; the district court should have applied the standard for actions involving both declaratory and non-declaratory relief from Colorado River Water Conservation District v. United States. The Fourth Circuit remanded the case so this correct standard could be applied.

On remand, the district court again abstained in favor of the state proceedings, and Bishop vonRosenberg appealed.

Failure to Meet the “Exceptional Circumstances” Abstention Standard

The Fourth Circuit began its analysis by establishing that Colorado River is a narrow standard; it requires that abstention of jurisdiction be justified by “exceptional circumstances.” The Fourth Circuit identified the first step in this “exceptional circumstances” test to be a determination of whether the state and federal cases are parallel. It listed three guiding principles for this determination: (1) the federal and state parties should have more in common than merely the litigation of substantially similar issues; (2) the parties themselves should be nearly identical; and (3) despite overlapping of facts, there must not be serious doubt that the state action would not resolve all the claims. The Fourth Circuit then noted that even if the if the factual circumstances are sufficiently parallel, Colorado River requires that a handful of procedural factors be balanced before abstaining.

In applying these principles to this case, the Court first observed that the parties in the two cases are not the same. Neither Bishop Lawrence nor Bishop vonRosenberg were parties to the state action. Furthermore, the two courts were not litigating the same claims. The state court looked only at the Episcopal Church’s false advertising claim, not that of Bishop vonRosenberg. Thus, because the state and federal cases involved different parties and different claims, the cases were not parallel as required by Colorado River‘s “exceptional circumstances” standard.


The Fourth Circuit concluded that the state and federal proceedings failed to meet Colorado River’s “exceptional circumstances” standard because, as they involved different parties and different claims, they could not be considered parallel cases. Accordingly, it vacated the abstention order and remanded the case back to the district court.

9-11-14 Letter to Southeast Toyota Finance

By Sarah Walton

On June 18, 2015, the Fourth Circuit issued a published opinion in the civil case of Design Resources, Inc. v. Leather Industries of America. The court held that Defendants’ statements about leather products were not false or misleading descriptions of fact, and therefore did not meet the standard for false advertising.

Origins of the Dispute

Plaintiff Design Resources, Inc. (“DRI”) produces furniture coverings and sells them to furniture manufacturers. DRI created a product known as “NextLeather®” (“NextLeather”), which consisted of 61% polyurethane, 22% poly/cotton, and 17% leather. DRI subsequently reached out to Dr. Nicholas Cory (“Cory”), a leather chemist and director of a laboratory owned by Leather Industries of America (“LIA”). DRI sought Cory’s opinion on whether it could market its product as “leather.” Cory told DRI that its product could not be marketed as leather, but suggested that it could market the product as “bonded leather” instead. DRI adopted Cory’s suggestion and marketed its product as bonded leather. In anticipation of the Spring High Point Furniture Market, DRI sold samples of NextLeather to various furniture manufacturers. A few weeks before the High Point event, Ashley Furniture (“Ashley”) ran an advertisement (“Ashley Advertisement”) in a trade magazine that read, “Is It REALLY LEATHER? … Some upholstery suppliers are using leather scraps that are mis-represented as leather …. Know What You Are Buying[.]” Several months later, Cory was quoted in two articles (“Cory’s Statements”), published one week apart, in which he stated that (1) referring to bonded leather products as “leather” was an outright deception, and (2) bonded leather products had the potential to confuse customers because the term did “not represent [the product’s] true nature.”

The District Court Grants Summary Judgment for Cory and Ashley

In February 2010, DRI filed a complaint against LIA, Cory, Ashley, and Todd Wanek, Ashley’s president, asserting false advertising claims under the Lanham Act and violations of North Carolina and Washington law. DRI moved for partial summary judgment and Ashley and LIA filed cross-motions for summary judgment. The district court granted Defendants’ motions and reasoned that (1) the Ashley Advertisement and Cory’s first statement were true, and (2) Cory’s second statement was an opinion, rather than a description of fact.

The Lanham Act

A plaintiff who alleges a violation of the Lanham Act must prove that (1) the defendant made a false or misleading description of fact; (2) the misrepresentation was material; (3) the misrepresentation actually deceived or had the potential to deceive; (4) the defendant placed the false statement into interstate commerce; and (5) the plaintiff was injured or is likely to be injured as a result of the misrepresentation.

DRI Failed to Prove that Defendants’ Descriptions Were False or Misleading Descriptions of Fact

The Fourth Circuit focused on the false or misleading element. For the Ashley Advertisement, the court reasoned that DRI could not prove that it was false or misleading because the advertisement only targeted products wrongly marketed as leather. As a result, the court concluded that customers would not be able to make inferences about DRI’s product because it was properly marketed as bonded leather.

For Cory’s Statements, the Fourth Circuit reasoned that Cory’s first statement was true because referring to bonded leather products as “leather” was misleading. The Fourth Circuit also concluded that Cory’s second statement about the confusing nature of the term “bonded leather” was not a fact, but rather an opinion. The court reasoned that Cory hypothesized that “bonded leather” could potentially confuse customers, but his hypothesis had no basis in fact. As a result, the court held that DRI could not succeed on the first element of the Lanham Act.

The Fourth Circuit Affirms the District Court’s Grant of Summary Judgment

Because DRI could not prove that the advertisements and statements at issue were false or misleading descriptions of fact, the court concluded that DRI could not succeed on its false advertising claim. Accordingly, the Fourth Circuit affirmed the district court’s grant of summary judgment to Cory and Ashley.