Vip Products, LLC v. Jack Daniel's Properties, Inc.

                 FOR PUBLICATION

  UNITED STATES COURT OF APPEALS
       FOR THE NINTH CIRCUIT


VIP PRODUCTS, LLC, an Arizona             No. 25-2027
limited liability company,
                                            D.C. No.
                                         2:14-cv-02057-
  Plaintiff-ctr-defendant - Appellant,
                                             SMM
 v.
                                           OPINION
UNITED STATES OF AMERICA,

            Intervenor - Appellee,

JACK DANIEL'S PROPERTIES,
INC., a Delaware corporation,

  Defendant-ctr-claimant - Appellee.



        Appeal from the United States District Court
                 for the District of Arizona
      Stephen M. McNamee, District Judge, Presiding

           Argued and Submitted May 20, 2026
                    Phoenix, Arizona

                  Filed August 4, 2026
2        VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES


    Before: MARSHA S. BERZON, MILAN D. SMITH, JR.,
        AND ANDREW D. HURWITZ, Circuit Judges.

                Opinion by Judge M. Smith, Jr.


                          SUMMARY*


                        Trademark Law

    The panel vacated the district court’s permanent
injunction in favor of Jack Daniel’s Properties, Inc., and
remanded to the district court for entry of judgment in favor
of VIP Products, LLC, on Jack Daniel’s claim for trademark
dilution under the Federal Trademark Dilution Act.
    Jack Daniel’s claimed that VIP’s “Bad Spaniels”
squeaky dog toy diluted its marks by associating its famed
whiskey with dog excrement. After a trial, the district court
entered a permanent injunction in favor of Jack
Daniel’s. Following an appeal, the district court entered
summary judgment in favor of VIP on the dilution
claim. Jack Daniel’s appealed. At the parties’ request, this
court summarily affirmed. The Supreme Court vacated and
remanded, and this court remanded to the district court,
which held that VIP was liable for dilution by tarnishment
and entered a permanent injunction.
    Under the Federal Trademark Dilution Act, dilution by
tarnishment means an association arising from the similarity


*
 This summary constitutes no part of the opinion of the court. It has
been prepared by court staff for the convenience of the reader.
        VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES       3


between a mark or trade name and a famous mark that harms
the reputation of the famous mark. The panel held that to
prove dilution of its mark by tarnishment, a plaintiff must
establish that its mark is famous, the allegedly diluting mark
is similar to the famous one, and the diluting mark creates a
mental association with the famous mark likely to damage
the famous mark’s reputation.
    The panel concluded that Jack Daniel’s did not meet its
burden to show dilution by tarnishment. The only marks it
proved famous were “Jack Daniel’s” and its registered trade
dress. Similarity was not disputed, but neither Bad Spaniels
nor the toy’s trade dress facially tarnished Jack Daniel’s
corresponding famous marks, and neither was portrayed in
an unwholesome or unsavory context that was likely to
tarnish the reputation of the famous marks.
4       VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES


                        COUNSEL

Bennett E. Cooper (argued), Vail C. Cloar, Alexandra
Crandall, and David G. Bray, Dickinson Wright PLLC,
Phoenix, Arizona, for Plaintiff-Counter-Defendant–
Appellant.
Steven H. Hazel (argued) and Daniel Tenny, Attorneys,
Appellate Staff, Civil Division; Brett A. Shumate, Assistant
Attorney General; United States Department of Justice,
Washington, D.C.; Timothy Courchaine, United States
Attorney, Office of the United States Attorney, United States
Department of Justice, Phoenix, Arizona; for Intervenor–
Appellee.
Matthew B. Nicholson (argued), Claire R. Cahill, Lisa S.
Blatt, Amy M. Saharia, and Dana S. Gotfryd, Williams &
Connolly LLP, Washington, D.C.; Isaac S. Crum, Messner
Reeves LLP, Phoenix, Arizona; for Defendant-Counter-
Claimant–Appellee.
Rebecca Tushnet, Harvard Law School, Cambridge,
Massachusetts, for Amici Curiae Law Professors.
Naresh Kilaru and Douglas A. Rettew, Finnegan Henderson
Farabow Garrett & Dunner LLP, Washington, D.C., for
Amici Curiae Trademark Law Professors.
        VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES        5


                         OPINION

M. SMITH, Circuit Judge:
    A man walks into a bar. Spying a distinct whiskey bottle,
he designs a squeaky dog toy to parody it. The toy is called
“Bad Spaniels,” and it looks like—you guessed it—a bottle
of Jack Daniel’s. But instead of “Old No. 7 Brand Tennessee
Sour Mash Whiskey,” the toy says, “Old No. 2 On Your
Tennessee Carpet.” It also says “43% POO BY VOL.” and
“100% SMELLY.” Unfortunately for Appellant VIP
Products, LLC (VIP), Appellee Jack Daniel’s Properties,
Inc. (JDPI) did not appreciate the joke.
    Instead, JDPI demanded that VIP stop selling Bad
Spaniels, and VIP responded with this suit, seeking a
declaratory judgment that it did not infringe or dilute JDPI’s
trademarks. JDPI counterclaimed under the Lanham Act, 

15 U.S.C. §§ 1114

, 1125, for trademark infringement and
dilution. The Lanham Act has long protected trademarks
from infringement by prohibiting unauthorized uses “that are
likely to cause confusion about the source of a product or
service.” Moseley v. V Secret Catalogue, Inc. (Moseley I),

537 U.S. 418, 428

 (2003). This appeal concerns a lesser-
known provision that protects a select class of famous marks
from dilution, which “occurs when consumers form new and
different associations with the plaintiff’s mark.” Trader
Joe’s Co. v. Trader Joe’s United, 

150 F.4th 1040

, 1054 (9th
Cir. 2025) (quoting Visa Int’l Serv. Ass’n v. JSL Corp., 

610 F.3d 1088, 1090

 (9th Cir. 2010)).
    In 1996, Congress created the first federal cause of action
for dilution. See Federal Trademark Dilution Act of 1995
(FTDA), 

Pub. L. No. 104-98, § 3

(a), 

109 Stat. 985

, 985
(1996). The purpose of the antidilution provision was “to
6         VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES


protect famous trademarks from subsequent uses that blur
the distinctiveness of the mark or tarnish or disparage it,
even in the absence of a likelihood of confusion.” Moseley
I, 

537 U.S. at 431

 (quoting H.R. Rep. No. 104-374, at 2
(1995)).1 To assuage First Amendment concerns, Congress
included exceptions for “fair use,” noncommercial use of
registered marks, and “[a]ll forms of news reporting and
news commentary.” 

15 U.S.C. § 1125

(c)(4); see Moseley I,

537 U.S. at 421

 n.1, 431.
     Congress amended the FTDA in 2006 to
“expressly . . . overrule the Supreme Court interpretation” in
Moseley I of the tarnishment provision. V Secret Catalogue,
Inc. v. Moseley (Moseley II), 

605 F.3d 382, 385

 (6th Cir.
2010); see Trademark Dilution Revision Act (TDRA), 

Pub. L. No. 109-312, 120

 Stat. 1730 (2006). In Moseley I, the
Supreme Court held that a plaintiff seeking injunctive relief
for dilution under the FTDA must demonstrate “actual
dilution, rather than a likelihood of dilution.” 

537 U.S. at 433

. Congress promptly rejected that reading in the TDRA,
which states that “the standard for proving a dilution claim
is ‘likelihood of dilution’” and confirms that “both dilution
by blurring and dilution by tarnishment are actionable.”
Moseley II, 

605 F.3d at 387

 (quoting H. Rep. No. 109-23, at
*5, *9 (2005), as reprinted in 2006 U.S.C.C.A.N. 1091,
1094, 1097).

1
 Blurring, which is not relevant to this appeal, typically involves “the
whittling away of an established trademark’s selling power through its
unauthorized use by others upon dissimilar products.” Deere & Co. v.
MTD Prods., Inc., 

41 F.3d 39, 43

 (2d Cir. 1994) (citation modified).
Tarnishment “generally arises when the plaintiff’s trademark is linked to
products of shoddy quality, or is portrayed in an unwholesome or
unsavory context likely to evoke unflattering thoughts about the owner’s
product.” 

Id.

        VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES        7


    To prove dilution of its mark by tarnishment, the plaintiff
must establish that its mark is famous, the allegedly diluting
mark is similar to the famous one, and the diluting mark
creates a mental association with the famous mark likely to
damage the famous mark’s reputation. In this case, that
burden falls to JDPI, who owns trademarks in the bottle and
labeling of the Old No. 7 Tennessee Whiskey product that
VIP’s dog toy parodies.
    JDPI argues that the Bad Spaniels toy dilutes its marks
“by associating the famed whiskey with,” as the Supreme
Court put it, “dog excrement.” Jack Daniel’s Props., Inc. v.
VIP Prods., LLC (Jack Daniel’s II), 

599 U.S. 140

, 144
(2023). We hold that JDPI has not met its burden to show
dilution by tarnishment and is therefore not entitled to
injunctive relief under the TDRA. We vacate the district
court’s entry of a permanent injunction and judgment to
JDPI and remand for entry of judgment to VIP.
  FACTUAL AND PROCEDURAL BACKGROUND
    “This case is about dog toys and whiskey, two items
seldom appearing in the same sentence.” Jack Daniel’s II,
599 U.S. at 144. JDPI owns the trademarks and trade dress
used in connection with Jack Daniel’s Brand whiskey
products. The marks at issue here are those featured on Jack
Daniel’s Old No. 7 Tennessee Sour Mash Whiskey:
8       VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES




    JDPI has held trademarks for “Jack Daniel’s” since 1875
and “Old No. 7” since 1904. JDPI also holds a trademark
for the three-dimensional square-shaped bottle it uses for
Jack Daniel’s Tennessee whiskey. And it holds additional
trademarks for the arched Jack Daniel’s logo, stylized label,
and filigree. JDPI’s marks have been used by the company
continuously for over a century, except during Prohibition.
    VIP designs, manufactures, and sells dog toys, including
a “parody line” of toys shaped like beer bottles, wine bottles,
and liquor bottles. Bad Spaniels joined the lineup in 2014.2
VIP’s owner Stephen Sacra arrived at the idea for Bad
Spaniels at a bar as he brainstormed new parody products.

2
 Other members of the kennel have included “Smella RCrotches,”
“Heini Sniff’n,” “Pissness,” “Dos Perros,” “Smella Arpaw,” and
“Doggie Walker.”
        VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES          9


Sacra pitched Bad Spaniels to VIP’s graphic designer, and
the two then designed a product that borrowed elements
from Jack Daniel’s whiskey to land the joke.
    The result: “Bad Spaniels” replaced “Jack Daniel’s”;
“Old No. 2” replaced “Old No. 7”; and “Tennessee carpet”
replaced “Tennessee whiskey.” At the bottom of the toy are
the words “43% POO BY VOL.,” in place of standard
alcohol-by-volume language, and “100% SMELLY.” The
top of the label features, as the district court put it, “a wide-
eyed spaniel.” The back of the toy includes a disclaimer
stating that the “product is not affiliated with Jack Daniel
Distillery.” The toy is in the shape of a square liquor bottle,
and, like Jack Daniel’s Old No. 7 whiskey, features a black
label with white lettering and filigree:




    Shortly after VIP introduced Bad Spaniels to its product
offerings, JDPI demanded that VIP stop selling the toy. This
10      VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES


litigation followed—and has unfolded for over a decade at
every level of the federal judiciary. VIP sued first, seeking
a declaration that Bad Spaniels did not infringe or dilute
JDPI’s trademarks. JDPI counterclaimed for trademark
infringement and dilution pursuant to the TDRA and
Arizona’s state analogue, see 

Ariz. Rev. Stat. Ann. § 44

-
1448.01 (1998). VIP asserted various affirmative defenses
in reply, including that Bad Spaniels is a “protected parody”
under the First Amendment. VIP did not then assert that the
TDRA is facially unconstitutional.
    On cross-motions for summary judgment, the district
court rejected VIP’s fair-use defense, reasoning that the
TDRA’s fair-use exception does not apply because VIP uses
“its Bad Spaniels trademark and trade dress as source
identifiers of its dog toy, which takes its alleged parody
product outside” the fair-use exclusion. The case proceeded
to a bench trial in 2017 on JDPI’s dilution and infringement
claims. After the four-day trial, the district court concluded
that Bad Spaniels infringed JDPI’s trademarks and tarnished
Jack Daniel’s Old No. 7 Tennessee Sour Mash Whiskey
trademarks and trade dress. In 2018, the district court
entered a permanent injunction in favor of JDPI.
    VIP appealed, and we reversed on the issue of dilution
and vacated on the issue of infringement. See VIP Prods.,
LLC v. Jack Daniel’s Props., Inc. (Jack Daniel’s I), 

953 F.3d 1170, 1176

 (9th Cir. 2020). As to infringement, we held that
Bad Spaniels is an “expressive work” subject to the test set
forth in Rogers v. Grimaldi, 

875 F.2d 994

 (2d Cir. 1989).
Jack Daniel’s I, 953 F.3d at 1174–76. We therefore
concluded that the district court erred in finding
infringement “without first requiring JDPI to satisfy” the
Rogers test. Id. at 1176. As to dilution, we held that because
Bad Spaniels used JDPI’s trade dress to “convey a humorous
        VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES        11


message,” that message was “protected by the First
Amendment,” and VIP was “entitled to judgment in its
favor.” Id.
    On remand, the district court held that JDPI could not
satisfy the Rogers test and granted summary judgment to
VIP on infringement. The district court also entered
summary judgment for VIP on the dilution claim. JDPI
again appealed, and, at the parties’ request, we summarily
affirmed. VIP Prods. LLC v. Jack Daniel’s Props., Inc., No.
21-16969, 

2022 WL 1654040

 (9th Cir. Mar. 18, 2022). The
Supreme Court granted certiorari. 

143 S. Ct. 476

 (2022)
(No. 22-148).
    The Supreme Court vacated and remanded for further
proceedings. See Jack Daniel’s II, 599 U.S. at 163. With
respect to infringement, the Court held that the Rogers test
does not apply “when an alleged infringer uses a
trademark . . . as a designation of source for the infringer’s
own goods.” Id. at 153. Because VIP used the marks
derived from Jack Daniel’s as “source identifiers,” JDPI’s
infringement claim depended on the likelihood of consumer
confusion, and the Court remanded that issue for the lower
courts’ consideration in the first instance. Id. at 161.
    With respect to dilution by tarnishment, the Supreme
Court held only that the TDRA’s noncommercial-use
exception “does not shield parody or other commentary
when its use of a mark is . . . source-identifying.” Id. at 163.
Because “VIP used the challenged marks as source
identifiers,” Bad Spaniels could not rely on that statutory
exception. Id. at 162.
    On remand from the Supreme Court, we requested
briefing from the parties on whether to decide the remaining
issues ourselves or remand to the district court. VIP Prods.
12      VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES


LLC v. Jack Daniel’s Props., Inc., No. 21-16969, 

2023 WL 12019678

 (9th Cir. Aug. 14, 2023). In its supplemental
brief, VIP argued that this court should consider, in the first
instance, VIP’s facial constitutional challenge to the
tarnishment provision, “even though it was not presented to
the district court before the 2018 judgment.” We ultimately
remanded the case to the district court.
    After remand, the parties agreed that the district court
could resolve all remaining issues on the record from the
2018 bench trial and filed cross-motions for judgment on the
infringement and tarnishment claims. As pertinent here, VIP
argued that JDPI failed to establish trademark dilution and
that the TDRA’s protections against dilution by tarnishment
are facially unconstitutional. The federal government
intervened to defend the constitutionality of the TDRA.
     Following a hearing on the parties’ cross-motions for
judgment, the district court held that VIP was liable for
dilution by tarnishment. The court declined to treat VIP’s
facial constitutional challenge after finding VIP waived it by
failing to raise it in its original pleadings pursuant to Federal
Rule of Civil Procedure 8(c). Finally, as to infringement, the
district court concluded that JDPI had not shown a likelihood
of consumer confusion and found in favor of VIP. Based on
its tarnishment finding, the district court entered a permanent
injunction and final judgment in favor of JDPI. VIP timely
appealed.
     JURISDICTION AND STANDARD OF REVIEW
     We have jurisdiction pursuant to 

28 U.S.C. § 1291

. We
review a district court’s legal conclusions following a bench
trial de novo and findings of fact for clear error. Montana v.
Talen Mont., LLC, 

130 F.4th 675, 686

 (9th Cir. 2025).
Likelihood of dilution “is a fact-intensive inquiry” generally
        VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES         13


reviewed for clear error. Swatch AG v. Beehive Wholesale,
LLC, 

739 F.3d 150, 155

 (4th Cir. 2014); see Visa Int’l, 

610 F.3d at 1090

; accord 3 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition § 24:117 (5th ed.
2026). The clear-error standard “does not inhibit [our]
power to correct errors of law, including . . . a finding of fact
that is predicated on a misunderstanding of the governing
rule of law.” Bose Corp. v. Consumers Union of U.S., Inc.,

466 U.S. 485, 501

 (1984).
                         ANALYSIS
    The TDRA entitles the owner of a “famous mark that is
distinctive” to enjoin the “use of a mark or trade name in
commerce that is likely to cause . . . dilution by tarnishment
of the famous mark, regardless of the presence or absence of
actual or likely confusion, of competition, or of actual
economic injury.” 

15 U.S.C. § 1125

(c)(1). “Dilution by
tarnishment” means an “association arising from the
similarity between a mark or trade name and a famous mark
that harms the reputation of the famous mark.” 

Id.

§ 1125(c)(2)(C). A mark is famous “if it is widely
recognized by the general consuming public of the United
States as a designation of source of the goods or services of
the mark’s owner.” Id. § 1125(c)(2)(A). The Lanham Act
also protects famous “trade dress,” or “the overall
appearance of a product and its packaging,” from dilution.
Jack Daniel’s II, 599 U.S. at 145; see 

15 U.S.C. § 1125

(c)(4).
    The parties dispute both the proper interpretation of the
TDRA’s tarnishment standard and its application to the
evidentiary record. In its 2025 order on the parties’ cross-
motions for judgment, the district court reasoned that JDPI
must “prove that at least one of its asserted trademark and
14      VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES


trade dress rights was not only valid but also famous before
the accused use began, and that the accused use is likely to
cause negative associations that harms the reputation of the
famous mark.” On appeal, JDPI adopts that framing of its
dilution claim and argues that “whether a junior mark is
tarnishing depends on how the defendant ‘use[s]’ the mark
in the real world.” In JDPI’s view, the thrust of actionable
dilution by tarnishment is whether the junior mark is “used
in ways that create tarnishing associations”—here, on a
“poop-themed dog toy”—even where the junior mark does
not “contain tarnishing language” on its face. That matters
because, as JDPI concedes, the “Bad Spaniels” mark “does
not itself refer to defecation” and therefore is not facially
tarnishing. VIP counters that the TDRA requires a mark-to-
mark comparison. Under VIP’s approach, JDPI was
required to prove that each individual mark VIP parodied
was famous and similar to VIP’s junior imitation and that
each of the latter marks was likely to cause reputational
harm.
    Understandably, JDPI seeks to protect the value of the
marks that identify it as “the producer of a quality product”
and, under federal law, are intended to ensure that it “will
reap the financial rewards associated with the product’s good
reputation.” Jack Daniel’s II, 599 U.S. at 146. But the
TDRA permits a specific and narrow mechanism for
recovery on a tarnishment theory: it protects only famous
marks from dilution and only where a similar junior mark is
likely to tarnish its reputation because of the marks’
association. Thus, when conducting a tarnishment analysis,
courts may only consider the dilutive effect of a junior mark
that is similar to a corresponding famous mark. Said
differently, courts may not consider senior marks that are not
famous or junior marks that are dissimilar when determining
         VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES           15


the likelihood of reputational harm to the senior mark. And
the burden to establish each element—fame, similarity, and
likelihood of reputational harm—lies with the plaintiff.
    JDPI falls short of meeting its burden here. The only
marks JDPI proved famous are “Jack Daniel’s” and its
registered trade dress. All other senior marks, including
“Old No. 7,” therefore drop out of our analysis. 3
Consequently, the only similar junior marks for our review
are “Bad Spaniels” and the dog toy’s trade dress. Because
neither “Bad Spaniels” nor the toy’s trade dress facially
tarnish JDPI’s corresponding famous marks, and VIP does
not dispute similarity, we consider whether either is
“portrayed in an unwholesome or unsavory context” that is
likely to tarnish the reputation of the famous marks.
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 

588 F.3d 97, 110

 (2d Cir. 2009). We conclude that JDPI did not
demonstrate a likelihood of dilution by tarnishment as to
either the “Bad Spaniels” mark or the dog toy’s trade dress.
    I. JDPI proved fame only as to “Jack Daniel’s” and
       its trade dress.
     We start with fame and similarity to determine which of
VIP’s corresponding junior marks factor into our
tarnishment analysis. In its 2018 order on the infringement
and dilution claims, the district court found that “Jack
Daniel’s trademarks and trade dress are famous and were
famous before VIP introduced ‘Bad Spaniels’ in July 2014.”
In its 2025 order on the parties’ cross-motions for judgment
following remand, the district court declined to “delineate

3
  Although JDPI also takes issue with “43% POO BY VOL.,” that phrase
does not mimic or reproduce any famous, similar mark. The equivalent
language on JDPI’s product, “40% ALC. BY VOL. (80 PROOF),” is not
a mark.
16      VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES


between ‘Jack Daniel’s’ and ‘Old No. 7’ when finding that
Jack Daniel’s trademarks are famous,” accepting JDPI’s
argument that “[a]ll of VIP’s Bad Spaniels marks associate
all of Jack Daniel’s famous marks with poop, regardless of
whether the marks themselves reference poop.” The district
court’s failure to delineate between the relevant senior marks
and to make findings on fame as to each erroneously lowered
JDPI’s burden of proof.
    “Dilution is a cause of action invented and reserved for
a select class of marks—those marks with such powerful
consumer associations that even non-competing uses can
impinge on their value.” Avery Dennison Corp. v. Sumpton,

189 F.3d 868, 875

 (9th Cir. 1999). To obtain federal
protection against dilution, a mark must be “truly prominent
and renowned.” 

Id.

 (citation modified). Thus, “[t]he
standard for satisfying the famousness element of protection
is a high one.” PetConnect Rescue, Inc. v. Salinas, 

656 F. Supp. 3d 1131

, 1163 (S.D. Cal. 2023). Under the TDRA, “a
mark is famous if it is widely recognized by the general
consuming public of the United States as a designation of
source of the goods or services of the mark’s owner.” 

15 U.S.C. § 1125

(c)(2)(A). Courts “may consider all relevant
factors” to determine “whether a mark possesses the
requisite degree of recognition,” including:

       (i) The duration, extent, and geographic
       reach of advertising and publicity of the
        VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES         17


        mark, whether advertised or publicized by the
        owner or third parties.
        (ii) The amount, volume, and geographic
        extent of sales of goods or services offered
        under the mark.
        (iii) The extent of actual recognition of the
        mark.
        (iv) Whether the mark [has been]
        registered . . . on the principal register.

Id.

    In other words, the mark must be a “household name.”
Blumenthal Distrib., Inc. v. Herman Miller, Inc., 

963 F.3d 859, 870

 (9th Cir. 2020). Because the TDRA uses the
“general consuming public as the benchmark,” a mark that
has acquired only “niche fame” is not famous under the
statute. 

Id. at 871

 (citation modified) (quoting Coach Servs.,
Inc. v. Triumph Learning LLC, 

688 F.3d 1356, 1373

 (Fed.
Cir. 2012)).        Examples of famous marks include
“TIFFANY,”         “POLAROID,”         “ROLLS      ROYCE,”
“KODAK,” “CENTURY 21,” and “OSCAR”. Fruit of the
Loom, Inc. v. Girouard, 

994 F.2d 1359

, 1362–63 (9th Cir.
1993).
     The district court analyzed the statutory factors only after
grouping the “Jack Daniel’s whiskey” product and “Jack
Daniel’s trademarks” together. First, the court found that
“Jack Daniel’s has spent hundreds of millions of dollars to
promote Jack Daniel’s whiskey.” Next, the court found that
“Jack Daniel’s has been the best-selling whiskey in the
United States since 1997, exceeding 75 million cases and 10
billion dollars in sales.” “In terms of recognition,” the
18      VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES


district court found that “Jack Daniel’s trademarks have been
used continuously for over a century, except during
Prohibition” and that “Jack Daniel’s trademarks and trade
dress have been viewed by millions of Americans in movies
and television programs” as well as on “jackdaniels.com,
which was visited more than four million times in 2014.”
Similarly, the district court found that “Jack Daniel’s trade
dress is prominently featured on social media pages for the
brand” and that, “[b]ased on Jack Daniel’s internal records,
Jack Daniel’s has achieved global recognition and aided
consumer awareness of the Jack Daniel’s brand is
consistently around 98%.” Finally, the district court found
that JDPI’s marks have “appeared on the Principal Register
of the United States Patent and Trademark Office since
before VIP’s use began.”
    This record supports a finding that the “Jack Daniel’s”
mark and the whiskey’s trade dress are famous, but not that
“Old No. 7” is also distinctly famous. “Old No. 7” cannot
be famous under the TDRA simply because “Jack Daniel’s”
is. See Fruit of the Loom, 

994 F.2d at 1362

 (affirming
district court’s conclusion that the combination of terms
“FRUIT Of The LOOM” “constitute[s] [the] distinctive
mark” and that “[t]he apple and grapes are embellishments
that do not have an independent strength”). The TDRA does
not permit borrowing fame from one senior mark to establish
the fame of another. Rather, it requires courts to assess fame
as to individual marks by applying “all relevant factors” to
each allegedly famous mark. See 

15 U.S.C. § 1125

(c)(2)(A).
The district court did not conduct any separate analysis as to
“Old No. 7,” and the record does not independently establish
that “Old No. 7” is famous. JDPI therefore cannot base a
tarnishment claim on “Old No. 7.”
        VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES      19


     Because VIP concedes similarity, we turn to whether
JDPI established a likelihood that “Bad Spaniels” and the
toy’s trade dress harm the reputation of “Jack Daniel’s” and
its registered trade dress.
 II.   “Bad Spaniels” and its trade dress are unlikely to
       harm the reputation of JDPI’s famous marks.
    The district court concluded that “‘Bad Spaniels’ creates
a negative association with Jack Daniel’s whiskey by
associating whiskey with dog feces and is likely to tarnish
Jack Daniel’s trademarks.” The district court disagreed with
VIP that it “must undertake a ‘correlative’ analysis of the
trademarks that VIP has appropriated for use on ‘Bad
Spaniels’” to find tarnishment. Instead, the court reasoned
that the TDRA “prohibits the ‘use of a mark’ that is likely to
cause dilution by tarnishment by associating a junior mark
with a similar famous mark.” Thus, the district court
explained:

       It is VIP’s use of Jack Daniel’s marks—on a
       poop-themed dog chew toy—that Jack
       Daniel’s claims tarnish its trademarks, not
       “Bad Spaniels” itself when taken in isolation.
       That “Bad Spaniels” as a trademark does not
       tarnish Jack Daniel’s does not also mean that
       “Bad Spaniels” the dog chew toy does not.

    In evaluating whether the Bad Spaniels toy tarnishes
“Jack Daniel’s,” the district court relied on the testimony of
JDPI’s expert, Dr. Itamar Simonson. It concluded that
“[b]ecause Jack Daniel’s produces a product intended for
human consumption, association of Jack Daniel’s marks
with something like dog feces is” not only tarnishing, but
“particularly detrimental.”
20       VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES


    In some circumstances, an association may dilute the
famous mark even where the junior mark is not tarnishing on
its face. If a junior mark is not facially tarnishing, the
context in which it is used may become relevant to the
tarnishment analysis, depending on the facts of the case. For
example, using a famous mark or a closely related depiction
on a product that is of poor quality or pornographic or illegal
may be tarnishing if the other requisites are met. See e.g.,
Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema,
Ltd., 

467 F. Supp. 366, 377

 (S.D.N.Y. 1979), aff’d, 

604 F.2d 200

 (2d Cir. 1979); Lorillard Tobacco Co. v. Cal. Imps.,
LLC, 

886 F. Supp. 2d 529

, 536–37 (E.D. Va. 2012)
(defendants’ use of “NEWPROT” mark to sell cigarettes
advertised as “spice” and potentially containing synthetic
marijuana likely tarnished plaintiffs’ famous “NEWPORT”
mark); Deere & Co., v. MTD Prods., Inc., 

41 F.3d 39

, 43 n.7
(2d Cir. 1994) (collecting examples). The plaintiff still bears
the burden of both establishing association and showing that
the association dilutes the famous mark. JDPI did not do so
here.
    JDPI maintains that the district court did not err in
crediting Dr. Simonson’s conclusions for this purpose.
Those conclusions were based on the Associative Network
Model (ANM) 4 and supported by “numerous empirical
studies.” The problem is that Dr. Simonson did not conduct
any studies on Bad Spaniels specifically, relying solely on
generic consumer psychology research to conclude that
“VIP’s introduction of ‘Bad Spaniels’ into the marketplace
resulted in reputational harm to Jack Daniel’s trademarks

4
  The ANM was developed in the 1970s and measures how brands and
ideas are represented in memory via the words, images, and associations
that come to mind when people think about a particular brand.
        VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES       21


and trade dress.” Dr. Simonson based that conclusion on a
two-step analysis. The first step asks “whether the allegedly
dilut[ing] product will bring or call to mind the allegedly
diluted mark”; if so, the second step asks “whether it has
affected the brand equity and brand association of the
allegedly diluted mark.”
    The district court accepted Dr. Simonson’s conclusion
that the first step was satisfied “because the point of VIP’s
product was to bring Jack Daniel’s whiskey to mind.” And
the district court adopted Dr. Simonson’s conclusion at the
second step because it was based on consumer psychology
research and “certain conclusions that apply to all products
and services regarding the impact of adding a negative
association onto the association of the existing brand.” In
particular, the district court credited Dr. Simonson’s reliance
on the ANM, based on his review of Jack Daniel’s
advertisements and the “key messages Jack Daniel’s
communicates regarding its brand values,” in concluding
that “positive mental associations . . . come to mind when
evaluating Jack Daniel’s before VIP introduced the ‘Bad
Spaniels’ dog toy.” As to Bad Spaniels’s tarnishing effect,
the district court also agreed with Dr. Simonson that
“consumer psychology research . . . establish[es] that when
food or beverage is associated with defecation, disgust is
generated in the consumer’s mind with respect to that food
or beverage.”
    Dr. Simonson testified that the ANM he created for “the
Jack Daniel’s product” following the introduction of Bad
Spaniels “add[ed] defecation as an additional node,” which,
through a “largely unconscious process,” “color[s] the brand
image.” Noting that “there has been a great deal of research
specifically on” the feeling of disgust created by “defecation,
feces, [and] poop,” Dr. Simonson explained that “[t]he
22        VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES


disgust generated by . . . poo by weight, Old No. 2, . . . or
defecation more generally” amounts to “an extreme example
of likelihood of tarnishment” when associated with a
consumable like Jack Daniel’s whiskey. Dr. Simonson
acknowledged that “[n]o [consumer] would think that
there’s poo in the Jack Daniel’s product” but that VIP
nevertheless “created a mental association between Jack
Daniel’s and poo, or Old No. 2, and therefore, for those
people exposed to this product, [VIP] diluted or more
specifically, tarnished the Jack Daniel’s whiskey.”
    Dr. Simonson’s generic testimony was insufficient to
prove a likelihood of dilution by tarnishment with regard to
these particular products.      To start, Dr. Simonson’s
conclusions with respect to “Old No. 2” are inapposite. As
we have explained above, JDPI did not show that “Old No.
7” is famous under the TDRA, so we do not consider any
dilutive effect of “Old No. 2” as a trademark.
    Next, even taking together all of Bad Spaniels’s
lavatorial references, Dr. Simonson’s testimony does not
establish a harmful association between any such reference
and JDPI’s two famous marks—“Jack Daniel’s” and its
registered trade dress.5 Dr. Simonson’s testimony does not


5
  We have “accepted th[e] rationale” that “the purpose of anti-dilution
law . . . is directed against the whittling away of plaintiff’s mark,” and
such “[w]hittling away will not occur unless there is at least some
subliminal connection in a buyer’s mind between the two parties’ uses
of their marks.” Fruit of the Loom, 

994 F.2d at 1363

; accord Acad. of
Motion Pictures Arts & Scis. v. Creative House Promotions, Inc., 

944 F.2d 1446

, 1457 (9th Cir. 1991). That “require[s] a threshold showing
of some mental association between the protected mark and the alleged
diluter.” Fruit of the Loom, 

994 F.2d at 1363

; see also McCarthy, supra,
§ 24:116 (“For . . . tarnishment to be likely, the marks must at least be
        VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES        23


show that any association between either “Bad Spaniels” and
“Jack Daniel’s” or between the products’ similar trade dress
is likely to damage the reputation of JDPI’s famous marks.
See, e.g., Anheuser-Busch, Inc. v. VIP Prods., LLC, 

666 F. Supp. 2d 974, 988

 (E.D. Mo. 2008) (denying preliminary
injunction for dilution by tarnishment regarding “Buttwiper”
dog toy where plaintiff put forth “no evidence that
‘Buttwiper’ has harmed the reputation of ‘Budweiser’”);
Starbucks, 

588 F.3d at 110

 (“That a consumer may associate
a negative-sounding junior mark with a famous mark says
little of whether the consumer views the junior mark as
harming the reputation of the famous mark.”).
    To the extent Dr. Simonson’s testimony established any
negative association, it was between some broad concept of
defecation and consumption of food and drink products. Dr.
Simonson acknowledged that he did not conduct a study on
whether the Bad Spaniels dog toy itself creates harmful
associations. Instead, he opined “that if you associate any
food or beverage with defecation, you are creating disgust
with respect to that food or beverage.” He also opined that
“it really doesn’t matter whether” poop-themed references
are made “on this thing that looks very much like a Jack
Daniel’s bottle, or any other product that creates an
association between Jack Daniel’s and defecation.” But Bad
Spaniels is a parodic dog toy not intended for human
consumption. There is no evidence in the record from which
a court could reasonably infer that scatological references
made on a dog toy have the same likelihood of generating
disgust as identical references on a consumable product



similar enough that a substantial segment of the target group of
customers sees the two marks as essentially the same.”).
24        VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES


meant for humans might. Dr. Simonson’s opinion to the
contrary is pure conjecture.
    That Bad Spaniels “projects an image at odds with
[JDPI’s] reputation for high-quality . . . products for
humans” does not prove a likelihood of reputational harm.
Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 

221 F. Supp. 2d 410

, 422–23 (S.D.N.Y. 2002). Although actual
dilution is not required under the TDRA, a likelihood of
dilution is. See, e.g., 

id.

 (finding plaintiff did not “put forth
any evidence supporting” the conclusion that its “mark will
suffer negative associations through defendant’s use” on
dog-friendly fragrance product); Tetley, Inc. v. Topps
Chewing Gum, Inc., 

556 F. Supp. 785, 794

 (E.D.N.Y. 1983)
(rejecting plaintiff’s state tarnishment claim where plaintiff
claimed that “defendant’s childish humor, in choosing the
rhyme word ‘flea’ to parody its tea, will result in images of
impurity, adulteration, and contamination in the minds of its
customers” but “offered absolutely no evidence . . . that
anyone would actually arrive at such a conclusion”);
Clinique Lab’ys, Inc. v. Dep Corp., 

945 F. Supp. 547, 562

(S.D.N.Y. 1996) (finding that “no evidence suggests that
Clinique’s trademark or trade dress will suffer negative
associations through Dep’s use of the Basique mark” on its
cleansing products in the same industry).
    Dr. Simonson’s opinions cannot bear out JDPI’s
tarnishment claim for another critical reason: the ANM
ignores that Bad Spaniels is an obvious parody. 6 The

6
  The parodic nature of VIP’s product does not, on its own, dispose of
JDPI’s tarnishment claim in light of the Supreme Court’s holding that
VIP could not avail itself of the TDRA’s statutory exclusion for fair-use
parodic works. Jack Daniel’s II, 599 U.S. at 161–63. But that holding
regarding a statutory coverage exception did not concern whether parody
         VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES              25


Supreme Court recognized that “[b]eyond source
designation, VIP uses the marks at issue in an effort to
‘parody’ . . . Jack Daniel’s.” Jack Daniel’s II, 599 U.S. at
153. That “expressive aspect” mattered “in assessing
confusion” for purposes of JDPI’s infringement claim
“because consumers are not so likely to think that the maker
of a mocked product is itself doing the mocking.” Id.; see
also id. at 161 (“[A] trademark’s expressive message—
particularly a parodic one, as VIP asserts—may properly
figure in assessing the likelihood of confusion.”). So too,
parody is a relevant factor in evaluating likelihood of
dilution.
    We agree with our sister circuits that even where “parody
is not automatically a complete defense to a claim of
dilution” because “the defendant uses the parody as its own
designation of source,” the TDRA “does not require a court
to ignore the existence of a parody that is used as a
trademark, and it does not preclude a court from considering
parody as part of the circumstances to be considered for
determining whether the plaintiff has made out a claim for
dilution.” Louis Vuitton Malletier S.A. v. Haute Diggity
Dog, LLC, 

507 F.3d 252

, 266–67 (4th Cir. 2007) (emphases
omitted); see also Deere & Co., 

41 F.3d at 45

 (explaining
that “[n]ot every alteration will constitute dilution, and more
leeway for alterations is appropriate in the context of satiric
expression and humorous ads for noncompeting products”);
Hormel Foods Corp. v. Jim Henson Prods., Inc., 

73 F.3d 497, 508

 (2d Cir. 1996) (finding “no likelihood of dilution
under a tarnishment theory,” in part because the Muppets



can factor into a tarnishment analysis or suggest any reason why it may
not.
26        VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES


Spa’am character satirized the Spam mark, “parody inheres
in the product,” and “[w]ithout Spa’am, the joke is lost”).7
      The “clarity of [VIP]’s parodic intent” impacts the
likelihood that JDPI’s famous marks are harmed by
association with VIP’s product. Hormel, 

73 F.3d at 503

. “A
parody       must      convey      two     simultaneous—and
contradictory—messages: that it is the original, but also that
it is not the original and is instead a parody.” 

Id.

 (citation
modified); see also Haute Diggity Dog, 

507 F.3d at 267

(“Even as Haute Diggity Dog’s parody mimics the famous
mark, it communicates simultaneously that it is not the
famous mark, but is only satirizing it.”). That dual message
impacts the dilution analysis because, where a parody is
successful and “not particularly subtle,” it is a common-
sense conclusion that consumers are more “likely to see [it]
as the joke it was intended to be.” Hormel, 

73 F.3d at 503

.
Thus, the Fourth Circuit has explained that where an
allegedly diluting product creates a “successful parody,” the
“facts impose on [the plaintiff] an increased burden to

7
  Several district courts have come to similar conclusions. See, e.g.,
Tommy Hilfiger, 

221 F. Supp. 2d at 423

 (finding that “no rational jury”
could conclude that “a designer [perfume] label has anything to lose from
mere association with pets” by virtue of defendant’s “Timmy
Holedigger” pet perfume, “particularly where the entire association is a
light-hearted if somewhat heavy-handed parody”); Jordache Enters.,
Inc. v. Hogg Wyld, Ltd., 

625 F. Supp. 48, 57

 (D.N.M. 1985), aff’d, 

828 F.2d 1482

 (10th Cir. 1987) (“Where the association is essentially a
harmless, clean pun, which merely parodies or pokes fun at the plaintiff’s
mark, tarnishment is not likely.”); Hormel Foods Corp. v. Jim Henson
Prods., Inc., No. 95 Civ. 5473, 

1995 WL 567369

, at *12 (S.D.N.Y. Sep.
25, 1995) (recognizing the “humorous reference” Spa’am makes to
SPAM and finding “it incredible that whatever ‘affirmative associations’
the SPAM brand has come to convey in the face of this negative humor
would be tarnished by [defendant’s] not particularly offensive joke”).
        VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES      27


demonstrate that the distinctiveness of its famous marks is
likely to be impaired” to obtain an injunction under a
blurring theory of dilution. Haute Diggity Dog, 

507 F.3d at 267

. The district court here recognized in its infringement
analysis that Bad Spaniels is a “parodic product” that was
“intended as a parody.” The parodic nature of Bad Spaniels
warranted discussion in the context of tarnishment.
     After all, no matter how similar to its famous
counterpart, a parodic junior mark ultimately “relies upon a
difference from the original mark, presumably a humorous
difference, in order to produce its desired effect.” Jordache
Enters. v. Hogg Wyld, Ltd., 

828 F.2d 1482, 1486

 (10th Cir.
1987). Dr. Simonson’s analysis ignored the effect of a
“humorous difference” on whether Bad Spaniels harms the
reputation of JDPI’s famous marks. To be sure, the district
court credited Dr. Simonson’s conclusion that the first step
of his dilution analysis was satisfied “because the point of
VIP’s product was to bring Jack Daniel’s whiskey to mind”;
that conclusion was based on VIP’s transparently parodic
use. But there is no evidence that Dr. Simonson considered
the parodic nature of VIP’s junior marks when building Jack
Daniel’s ANM, or that satire otherwise factored into his
analysis of the mental association between the disputed
marks. Parody, however, is inherent in the Bad Spaniels
product—indeed, as Dr. Simonson recognized, it was the
“whole point.” Failing to consider the effect of VIP’s
obvious parody on the likelihood of tarnishment was a
critical misstep, and the district court erred in adopting the
conclusions that followed.
    In sum, the burden of proving a likelihood of dilution
“always remains with the plaintiff.” McCarthy, supra,
§ 24:89; cf. KP Permanent Make-Up, Inc. v. Lasting
Impression I, Inc., 

543 U.S. 111

, 118–20 (2004) (burden of
28        VIP PRODUCTS, LLC V. JACK DANIEL’S PROPERTIES


proving infringement under the Lanham Act, including
likelihood of confusion, belongs to the plaintiff, and there is
no “burden to show nonconfusion on a defendant”). The
district court erred in concluding that JDPI met that burden
and that Dr. Simonson’s testimony was sufficient to prove a
likelihood of dilution beyond speculation.8
                          CONCLUSION
    We hold that JDPI is not entitled to an injunction for
dilution by tarnishment under the TDRA. We accordingly
VACATE the district court’s permanent injunction to JDPI
and REMAND for entry of judgment in VIP’s favor.9




8
  JDPI contends that “a plaintiff seeking to establish a likelihood of
dilution is not required to go to the expense of producing expert
testimony or market surveys,” Visa Int’l, 

610 F.3d at 1091

. But JDPI
has offered, and indeed rested its case on, expert testimony to establish
this element of its tarnishment claim. We may accordingly review that
evidence for sufficiency. That JDPI “may rely entirely on the
characteristics of the marks at issue” to prove likelihood of dilution does
not avail it, given JDPI’s concession that “Bad Spaniels” and its trade
dress are not facially tarnishing. 

Id.

9
  Because we reverse and remand as to JDPI’s tarnishment claim, we do
not address VIP’s other arguments, including its constitutional challenge
to the tarnishment provision. See Luther v. Berryhill, 

891 F.3d 872, 875

(9th Cir. 2018).