Under the Trademark Dilution Revision Act, 15 U.S.C. § 1125(c), tarnishment requires a famous senior mark, a similar junior use, and an association likely to harm the famous mark’s reputation, with the plaintiff bearing the burden on each element.
In VIP Products, LLC v. Jack Daniel’s Properties, Inc., No. 25-2027 (9th Cir. Aug. 4, 2026), the Ninth Circuit vacated the permanent injunction against VIP’s “Bad Spaniels” parody dog toy and directed entry of judgment for VIP. The court held that a dilution-by-tarnishment claim requires proof of likely reputational harm to the particular famous mark at issue—not merely an association between the junior use and the senior brand.
The case returned to the Ninth Circuit following Jack Daniel’s Properties, Inc. v. VIP Products, LLC, 599 U.S. 140 (2023). There, the Supreme Court held that the Rogers test did not apply because VIP used Jack Daniel’s trademarks as source identifiers for its own goods. The Court also held that VIP could not invoke the TDRA’s statutory exclusion for noncommercial use. The Rogers test generally protects expressive uses of another’s mark unless the use lacks artistic relevance or explicitly misleads consumers as to source.
On remand, the district court found no likelihood of consumer confusion and ruled for VIP on infringement, but it separately held VIP liable for tarnishment and entered a permanent injunction barring sale of the toy.
The Ninth Circuit reversed that tarnishment ruling, emphasizing the distinction between association and harm. A parody necessarily evokes the original mark, but that association alone does not establish likely reputational injury. Jack Daniel’s relied on expert testimony concerning consumer reactions to the challenged product, but the court found the evidence insufficient to establish that Bad Spaniels was likely to harm the reputation of the particular famous marks at issue.
The court also held that “Old No. 7” could not simply borrow the fame of the “Jack Daniel’s” mark; Jack Daniel’s had not independently established “Old No. 7” as famous under the TDRA.
Finally, the court held that the Supreme Court’s 2023 decision did not make parody irrelevant. Although VIP could not invoke the TDRA’s statutory fair-use exclusion, the parodic character of the use remained relevant to whether tarnishment was likely, consistent with Hormel Foods Corp. v. Jim Henson Productions, Inc., 73 F.3d 497 (2d Cir. 1996).
The practical takeaway: fame, similarity, and an offensive or unsavory junior product do not, without more, establish tarnishment. Instead, the plaintiff must connect the challenged use to a likely injury to the famous mark’s reputation.