Trademark Cases To Watch In 2025

In this Law360 article, Dale Cendali discussed trademark cases to watch in 2025.

Justices will decide whether it's appropriate to have corporate affiliates of a trademark defendant pay $47 million in damages, and appellate courts are expected to grapple with how to apply the U.S. Supreme Court's 2023 opinion in Jack Daniel's fight over a chewy dog toy. Here are Law360's picks for trademark cases to watch in 2025.

Dewberry Group Inc. v. Dewberry Engineers Inc.
The Supreme Court heard arguments in this long-running trademark dispute in December that focuses on whether corporate affiliates of Dewberry Group should be responsible for a $47 million infringement judgment, despite the affiliates not being defendants in the case.

Dewberry Group asked for the high court's involvement after a Fourth Circuit panel affirmed a Virginia federal court's decision to put corporate affiliates on the hook for payment after finding that Dewberry Group had no money to pay.

Dewberry Engineers opposed the justices taking up the case, arguing that federal trademark law supports courts having "broad discretion" to deal with "the wide variety of creative infringers the court might face." Dewberry Group countered that the district court's decision ignored long-standing principles of corporate separateness and veil piercing.

Christine Farley, a law professor at American University's Washington College of Law, predicts the justices will not agree with disgorging profits from Dewberry Group's affiliated entities.

"My guess is the Supreme Court is not going to let that fly," Farley said. "What I've seen over the years is that the Supreme Court never is persuaded by the argument that there's something different about intellectual property law, that the rules that apply here should be different from any other area of law."

Regardless of the high court's opinion, Farley said one thing litigators could learn from the case is "to be as careful as they can in thinking through a case to its conclusion and what kind of remedies are possible."

"And if there are related entities that should be held responsible for the infringement, that should be something that's anticipated at the beginning of the litigation," she said.

The case is Dewberry Group Inc. v. Dewberry Engineers Inc., case number 23-900, in the Supreme Court of the United States.

VIP Products LLC v. Jack Daniel's Properties Inc.
The decade-long battle between Jack Daniel's and a company that parodied the whiskey maker's well-known bottles with a poop-themed dog toy are waiting for a key ruling from a federal court in Arizona, where their dispute began before making it to the Supreme Court in 2023.

The parties asked the district court in February to enter judgment in their favor after justices determined that VIP Products could not avail itself of the so-called Rogers test to avoid a likelihood-of-confusion analysis. The Rogers test is a Second Circuit doctrine that holds that certain works are protected by the First Amendment against trademark infringement and a likelihood-of-confusion analysis, provided they have expressive value and don't explicitly mislead consumers.

Jack Daniel's asked the court to reinstate its original judgment that VIP Products infringed and diluted its trademark.

Meanwhile, VIP Products argued the Supreme Court's ruling — which held the Rogers test does not apply when trademark defendants use someone else's marks to identify their own products — does not change the fact that Jack Daniel's still has failed to prove the chewable dog toy in question has caused confusion or harmed the whiskey company's reputation.

VIP Products conceded early in the litigation that the trademark "Bad Spaniels" for its dog toy and the trade dress mimicking a Jack Daniel's bottle were source identifiers, which attorneys say contributed to VIP Products' loss at the high court and may ultimately doom its case in district court again.

"They were being a little bit arrogant in the beginning, and I think, unfortunately, they have to live with the representation they made in their pleadings," said Irene Lee, a partner at Russ August & Kabat.

Lee said VIP Products' business model has been to file suits for declaratory judgment, much like it did with Jack Daniel's, to get ahead of possible infringement claims for its line of dog toys that parody drinks, such as Heineken and Coca-Cola. When the Supreme Court handed down its opinion in the Jack Daniel's case, Lee said she had found nearly two dozen declaratory judgment actions that VIP Products filed against various companies.

"I just don't see how they can get away with what they did," Lee said.

VIP Products has remained firm in its position that the intent of its dog toy was to create a parody and that regardless of whether the Rogers test applies, the Bad Spaniels toy "is a legitimate parody of a trademark."

"While the similarity of the parties' marks normally weighs in favor of the plaintiff, such similarity favors a defendant parodist because a reasonable level of similarity is essential to make the parody work," VIP Products said in February.

The case is VIP Products LLC v. Jack Daniel's Properties Inc., case number 2:14-cv-02057, in the U.S. District Court for the District of Arizona.

Punchbowl Inc. v. AJ Press LLC
The trademark battle between a news outlet called Punchbowl News and a greeting and event planning business named Punchbowl Inc. has highlighted how courts have grappled with the Supreme Court's Jack Daniel's decision.

The Ninth Circuit and district court had initially ruled in favor of AJ Press, the company that runs Punchbowl News, by applying the Rogers test. But the Jack Daniel's opinion forced the Ninth Circuit to rethink its prior ruling and send the case back to the district court. There, a judge again sided with AJ Press after conducting a likelihood-of-confusion analysis as directed by the appeals court.

U.S. District Judge Stephen Wilson's opinion made clear it wasn't a close call.

"Ultimately, the dissimilarity and lack of proximity between the services provided by the plaintiff and defendant carry the day," Judge Wilson said. "This conclusion is the obvious one."

The case is not over, however. Punchbowl Inc. appealed to the Ninth Circuit, which will have another chance to analyze the case, but this time, without the Rogers test.

"I don't know how it'll turn out. At this point, it's been relegated to a fairly straightforward likelihood-of-confusion analysis," said Craig Whitney, a partner at Proskauer Rose LLP.

The case is Punchbowl Inc. v. AJ Press LLC, case number 24-5833, in the U.S. Court of Appeals for the Ninth Circuit.

Hermes International v. Rothschild
Los Angeles designer Mason Rothschild, who lost a trademark infringement trial against Hermes International in 2023, made his case to the Second Circuit in October for why he believes he did not infringe the Paris designer's Birkin mark by creating nonfungible tokens that looked like the famous handbags.

The case is yet another wrestling with how to balance First Amendment interests with those of trademark owners while trying to follow the Supreme Court's guidance from Jack Daniel's. Rothschild told a Second Circuit panel during arguments that his "MetaBirkins" NFTs are not goods but art, and should be analyzed differently under the Rogers test.

However, one of the circuit judges noted in response that jurors were instructed to take the First Amendment into consideration during deliberations.

The Rogers test originated in the Second Circuit, and Rothschild's appeal provides the appeals court "an opportunity to say something about it, clarify something about how it's supposed to work post-Jack Daniels," said Dale Cendali, a partner at Kirkland & Ellis LLP.

"There are certainly courts grappling with whether something is a source identifier or not, and it looks like it could be a case that discusses that as well," Cendali said. "You're seeing that as an issue in many of these cases. Sometimes it's very clear whether something is a source identifier, but sometimes it's less clear."

Another interesting aspect of the case is "what it means to be a trademark in cyberspace," said Randi Singer, a partner at Sidley Austin LLP.

"It will be interesting to watch what the Second Circuit says in the MetaBirkins case about what's art and what's commerce," Singer said.

The case is Hermes International v. Rothschild, case number 23-1081, in the U.S. Court of Appeals for the Second Circuit.

Honorable Mention: Hara v. Netflix Inc. et al.
The Ninth Circuit is expected to issue an opinion in 2025 in an appeal from a drag queen accusing Netflix of using her likeness without permission in a series titled "Q-Force," an animated show about a gay superspy and his LGBTQ squad.

In 2023, a California federal court dismissed the complaint from Lance Hara — known as drag queen Vicky Vox — citing the Rogers test and concluding the series is an expressive work and that Hara's likeness was artistically relevant. The complaint included false endorsement and right-of-publicity claims.

During arguments before an appeals court panel, Hara argued the Rogers test does not apply in cases where a trademark is used as a source indicator or to create a false endorsement. Netflix disagreed, contending the Rogers test applies unless the use of a likeness is irrelevant or explicitly misleading.

Whatever the Ninth Circuit decides, its opinion may include language that further clarifies when the Rogers test is applicable after the Supreme Court's decision in the Jack Daniel's dispute.

The case is Hara v. Netflix Inc. et al., case number 23-3768, in the U.S. Court of Appeals for the Ninth Circuit.