Asserting or Defeating a Trademark Fair Use Defense: A Practical Guide

Summary. This guide walks through a trademark fair use dispute step by step from both sides: the accused user who wants to assert descriptive fair use, nominative fair use, a dilution exclusion, or an expressive-work defense, and the brand owner who wants to defeat it. Part one follows the accused user from the demand letter through the declaratory judgment decision, the answer, discovery, surveys, summary judgment, preliminary injunction practice, and trial. Part two follows the brand owner through investigation, claim selection, pleading around the defense after Jack Daniel's v. VIP Products, discovery aimed at use as a mark and good faith, and the injunction and summary judgment fights. It explains who carries which burden in each circuit, what evidence actually decides these cases, and how the Federal Rules and the Lanham Act set the deadlines. A timeline and cost table, special situations (the TTAB, personal names, certification marks, online uses, and constitutional challenges), an extended worked example involving a sunscreen tagline, common mistakes, an FAQ, and practical takeaways complete the guide.

The letter arrives on a Tuesday: stop using "mineral shield" on your sunscreen within ten days, destroy your inventory, and account for every dollar of profit. Your label says "reef-friendly mineral shield" in small type under your own brand name, and nobody on your team ever thought of those words as someone else's trademark. Whether that letter turns into a two-paragraph reply or a $400,000 lawsuit depends mostly on things you still control: what you say back, what you keep, what you change, and how you plead. If you sent the letter, the same is true in reverse.

This guide is the procedural companion to our article Trademark Fair Use: Descriptive Use, Nominative Use, and Expressive Works After Jack Daniel's, which explains the doctrine in depth. Here the focus is sequence: who does what, in what order, with which rule, and at what cost.

The short answer

• Classify the use first. Every fair use dispute turns on whether the accused party used the term (a) as its own brand, (b) to describe its own goods, (c) to refer to the brand owner's goods, or (d) in commentary or a creative work. Only (a) is an ordinary infringement case. The other three are fair use territory, and each has its own test.
• Descriptive fair use is an affirmative defense. The defendant must plead it in the answer under Fed. R. Civ. P. 8(c) and prove its three elements under 15 U.S.C. § 1115(b)(4): use otherwise than as a mark, in a descriptive sense, in good faith. The plaintiff still has to prove likely confusion, and some confusion is compatible with fair use. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004).
• Nominative fair use depends on the circuit. The Ninth Circuit substitutes the three-part New Kids test for the ordinary confusion factors and leaves the burden on the plaintiff; the Third Circuit makes the defendant prove fairness after the plaintiff proves confusion; the Second Circuit weighs the New Kids factors alongside its Polaroid factors.
• After Jack Daniel's, source-identifying use is the threshold question. If the defendant uses the mark (or a parody of it) as a designation of source for its own goods, the Rogers expressive-work test and the dilution exclusions for parody and noncommercial use are unavailable. Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023).
• The record is built before the lawsuit. How the term was chosen, how it is displayed, and what the defendant has said about it in applications, pleadings, and press decide most of these cases, usually at summary judgment.
• Brand owners win by demanding the cure, not silence. Courts tailor relief in referential cases and award fees in exceptional ones. A narrowly framed demand is cheaper to enforce and harder to resist.

The legal framework in one place

Two background rules apply everywhere. An incontestable registration under 15 U.S.C. § 1065 cannot be challenged as merely descriptive, Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985), but it remains subject to the descriptive fair use defense, which is written into the same section. And trademark fair use has nothing to do with the four copyright factors in 17 U.S.C. § 107; briefs that blur the two lose credibility fast.

The decisions that shape practice

• KP Permanent (2004). The defendant does not have to negate confusion to win on descriptive fair use; the degree of confusion may still bear on fairness. On remand the Ninth Circuit listed the factors courts now weigh, including the strength of the mark, the descriptive nature of the term, the availability of alternatives, and the defendant's prior use. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596 (9th Cir. 2005).
• Kelly-Brown (2013). In the Second Circuit, "use as a mark" is part of the defense, not an element the plaintiff must plead, and a pattern of uses that looks like brand-building defeats a motion to dismiss. Kelly-Brown v. Winfrey, 717 F.3d 295 (2d Cir. 2013).
• Marketquest (2017). Each materially different use gets its own fair use analysis; a court cannot lump a catalog title, a promotional reference, and an online ad together. Marketquest Group, Inc. v. BIC Corp., 862 F.3d 927 (9th Cir. 2017).
• Tiffany v. Costco (2020). A $21 million judgment against Costco for point-of-sale signs reading "Tiffany" was vacated because a jury could find the word described a ring setting and was used in good faith. Tiffany & Co. v. Costco Wholesale Corp., 971 F.3d 74 (2d Cir. 2020).
• Tabari (2010). In the Ninth Circuit, once a defendant shows it used the mark to refer to the plaintiff's product, the burden "reverts to the plaintiff to show a likelihood of confusion," and injunctions must be tailored to the referential use. Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010).
• Century 21 (2005) and Security University (2016). The Third Circuit's two-step test puts the fairness burden on the defendant, Century 21 Real Estate Corp. v. LendingTree, Inc., 425 F.3d 211 (3d Cir. 2005); the Second Circuit treats nominative use as factors, not an affirmative defense, International Information Systems Security Certification Consortium, Inc. v. Security University, LLC, 823 F.3d 153 (2d Cir. 2016).
• Jack Daniel's (2023), Vans (2023), and Punchbowl (2024). Source-identifying use takes a case out of Rogers and out of the parody and noncommercial dilution exclusions; the Second Circuit affirmed a preliminary injunction against MSCHF's "Wavy Baby" sneakers on that basis, Vans, Inc. v. MSCHF Product Studio, Inc., 88 F.4th 125 (2d Cir. 2023), and the Ninth Circuit sent a news company's use of PUNCHBOWL back for an ordinary confusion analysis because the company used the name to identify its news products (it had even applied to register PUNCHBOWL NEWS and PUNCHBOWL PRESS), Punchbowl, Inc. v. AJ Press, LLC, 90 F.4th 1022 (9th Cir. 2024).
• Rosetta Stone (2012). The defendant must prove the dilution exclusions, and good faith is part of fair use under them. Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144 (4th Cir. 2012).
• Trader Joe's United (2025). A district court may not dismiss a claim on nominative fair use grounds the defendant never raised, without giving the plaintiff a chance to respond and applying the three-factor test. Trader Joe's Co. v. Trader Joe's United, 150 F.4th 1040 (9th Cir. 2025).

Part one: asserting the defense, step by step

This part follows the accused user. The steps overlap in practice, but the order matters: the record you build in steps 1 through 3 is the record you will have at summary judgment.

Step 1: Inventory and classify every use (days 1 to 7)

Before anyone answers the letter, list every place the disputed term appears: labels and packaging, product pages, app store listings, ads, search keywords, metatags, social posts and hashtags, domain names, sales decks, press releases, and trademark filings. Then classify each use.

Courts analyze materially different uses separately, so one bad use does not doom the good ones, and one good use does not save the bad ones. Marketquest, 862 F.3d 927. The classification also tells you what to change. A stylized banner with a ™ symbol next to the borrowed phrase is a source-identifying use that should be retired now; the same phrase in sentence case under your house mark is probably defensible. Modifying a use after a demand generally helps the good-faith picture rather than hurting it.

Step 2: Preserve the record and gather the adoption story (days 1 to 14)

Issue a written litigation hold covering the marketing, product, design, and legal teams, including chat channels and agency files; failure to preserve electronically stored information can bring sanctions under Fed. R. Civ. P. 37(e). Capture dated copies of every web use so they can be authenticated later under Fed. R. Evid. 901; see Capturing the Web: A Practitioner's Guide to Authenticating Website Screenshots as Evidence in Federal Court. Then collect the adoption story: the naming brief, the alternatives considered, any clearance search, who knew about the brand owner's mark and when, and why the term was chosen. The cases are consistent that knowing about the plaintiff's mark is not bad faith, Car-Freshner Corp. v. S.C. Johnson & Son, Inc., 70 F.3d 267 (2d Cir. 1995), and that neither skipping a search nor continuing after a demand letter is bad faith by itself, Dessert Beauty, Inc. v. Fox, 568 F. Supp. 2d 416 (S.D.N.Y. 2008). What hurts is evidence that you chose the term because of the plaintiff's success or styled it to look like the plaintiff's brand. Find those documents before the other side does.

Step 3: Answer the demand letter (by the deadline, or ask for two weeks)

A good response does four things. It explains, briefly and with authority, why each use you are keeping is descriptive or referential. It offers the changes that cure any genuinely problematic use (retire the banner, drop the logo, add "independent" or a non-affiliation statement). It declines the overbroad demands (destruction of inventory, an accounting, a promise never to use ordinary words). And it reserves all rights. Mark settlement proposals as such; offers of compromise are generally inadmissible to prove liability under Fed. R. Evid. 408, although the letter can be used for other purposes, such as showing notice.

Just as important is what the response should not say. Never describe the disputed term as "our mark" or "our brand," because the brand owner will quote it back as an admission of source-identifying use, the fact that cost VIP its Rogers defense in Jack Daniel's. Do not concede confusion, and do not make factual claims you cannot document. For the full workflow, see Responding to a Trademark Cease-and-Desist Letter and its companion Responding to a Trademark Cease-and-Desist Letter Checklist: A Practical Checklist.

Step 4: Decide whether to file first (decision point)

A demand letter that threatens suit usually creates enough of a controversy for a declaratory judgment action under 28 U.S.C. § 2201, judged under "all the circumstances." MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007). Filing first lets the accused user choose a proper venue under 28 U.S.C. § 1391, and therefore the circuit's nominative fair use rules, and frame the case; VIP's Bad Spaniels litigation began as VIP's own declaratory action. The risks are real: courts may decline jurisdiction over an anticipatory filing made while the brand owner was negotiating, a transfer motion under 28 U.S.C. § 1404 may follow, and filing guarantees a fight the brand owner might have dropped. File first when the brand owner has a history of suing, when the forum difference matters (for example, the Ninth Circuit's burden rule versus the Third Circuit's), or when the uncertainty is freezing a product launch. Otherwise, a firm response and a quiet wait is often the cheaper path. See Declaratory Judgment Actions: Jurisdiction, Discretion, and the Race to the Courthouse.

Step 5: Move to dismiss or plead the defense (21 days after service)

The answer or a motion is due 21 days after service, or 60 days after a waiver request was sent if the defendant waives service. Fed. R. Civ. P. 12(a); Fed. R. Civ. P. 4(d).

Moving to dismiss. A motion under Rule 12(b)(6) can succeed on fair use when the complaint and the materials it incorporates show descriptive or referential use and allege no plausible facts of bad faith, as in Hensley Manufacturing v. ProPride, Inc., 579 F.3d 603 (6th Cir. 2009). The plausibility standard of Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009) applies to the plaintiff's allegations of confusion and of use as a mark, and the court can take judicial notice of registrations and file histories under Fed. R. Evid. 201. Expect the motion to fail if the complaint alleges a pattern of brand-like uses (Kelly-Brown) or if the threshold question of source-identifying use turns on disputed facts, which after Jack Daniel's it often does.

Answering. Plead every defense that fits, each with supporting facts rather than a one-line label. A serviceable descriptive fair use paragraph reads like this:

Defendant's use of the words "mineral shield" is a fair use under 15 U.S.C. § 1115(b)(4). Defendant uses those words otherwise than as a mark, in lowercase type beneath its BRIGHTWATER house mark, solely to describe a characteristic of its own sunscreen: that it uses mineral filters that form a physical barrier on the skin. Defendant adopted the words in good faith for their ordinary descriptive meaning, which is common in dermatology and in the sunscreen industry.

Add the other defenses that fit: nominative fair use; the dilution exclusions in § 1125(c)(3); Rogers and the First Amendment for expressive works; no use "in connection with" goods or services; and, where the facts support them, laches and acquiescence (see Understanding Equitable Defenses: A Comprehensive Guide to Laches, Acquiescence, Waiver, and Equitable Estoppel). If you intend to argue that a provision of the Lanham Act is unconstitutional, say so in the answer and file the notice of constitutional question required by Fed. R. Civ. P. 5.1 so the court can certify the question to the Attorney General under 28 U.S.C. § 2403. On remand in the Bad Spaniels case, the District of Arizona refused to consider VIP's facial challenge to the tarnishment provision because VIP had not raised it in its original pleadings, and as of this writing VIP's appeal is pending in the Ninth Circuit. Consider counterclaims for a declaration of noninfringement and, if grounds exist, partial cancellation under 15 U.S.C. § 1119; remember that an incontestable registration cannot be cancelled for mere descriptiveness. Every defense and counterclaim must have evidentiary support or be likely to have it after discovery. Fed. R. Civ. P. 11(b). For pleading mechanics, see Drafting an Answer and Affirmative Defenses: A Practical Guide.

Step 6: Build the defense in discovery (months 2 to 10)

The scheduling order under Fed. R. Civ. P. 16(b) usually allows six to twelve months of fact discovery. Initial disclosures are due 14 days after the parties' Rule 26(f) conference. Fed. R. Civ. P. 26. Use the period to prove each element:

• Otherwise than as a mark: every version of the accused use, with the house mark, type sizes, and placement visible; proof that you never applied to register the term or put a ™ on it.
• Descriptive sense: dictionary definitions, trade publications, competitors' uses, regulators' and scientists' usage, and the plaintiff's own descriptive uses of the same words.
• Good faith: the adoption record from step 2, witnesses who can explain it, and evidence that you chose the most natural words available.
• Weak or absent confusion: interrogatories under Fed. R. Civ. P. 33 and a Rule 30(b)(6) deposition of the plaintiff on every instance of claimed actual confusion, its enforcement history, and third-party uses it has tolerated; requests for admission under Fed. R. Civ. P. 36 that pin down the absence of confusion evidence. Unanswered requests are deemed admitted after 30 days.

Decide early whether to rely on an opinion of counsel to show good faith. Relying on it usually waives privilege over the subject matter, so the decision should be made before depositions, not after. See The Shield of Good Faith: How Trademark Clearance Searches, Attorney Opinions, and USPTO Approval Protect Against Willful Infringement Claims.

Step 7: Make the survey and expert decisions (decision point)

The defendant has three options: commission its own survey, critique the plaintiff's survey through a rebuttal expert, or both. In fair use cases the critique is often the better investment, because the defendant does not have to disprove confusion (KP Permanent) and because confusion surveys in parody and nominative cases are vulnerable to the criticism Justice Sotomayor made in Jack Daniel's: they may measure respondents' beliefs that any use of a brand needs permission rather than marketplace confusion. The universe must be the people who actually encounter the accused use; a survey of the brand owner's existing customers carried little weight in Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477 (5th Cir. 2004). Challenge a flawed survey under Fed. R. Evid. 702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), or argue its weight under Fed. R. Evid. 403. For descriptive fair use, consider a linguist or industry expert who can explain how the term is ordinarily used. Expert disclosures are due 90 days before trial absent an order, with rebuttal disclosures 30 days after the other side's, though most scheduling orders set earlier dates. See Daubert Challenges to Consumer Survey Experts in Trademark Litigation: A Practical Guide and Taking and Defending an Expert Deposition: A Practical Guide.

Step 8: Move for summary judgment (usually within 30 days after discovery closes)

Absent a local rule or order, a summary judgment motion may be filed until 30 days after the close of all discovery. Fed. R. Civ. P. 56. The movant must show no genuine dispute of material fact, Celotex Corp. v. Catrett, 477 U.S. 317 (1986), and a dispute is genuine only if a reasonable jury could find for the nonmovant, Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986). Organize the motion use by use and element by element, lead with the undisputed documents (the label, the ad, the file history), and explain why the plaintiff's confusion evidence does not defeat the defense. Defendants have won fair use on summary judgment in cases involving lipstick displays, Cosmetically Sealed Industries, Inc. v. Chesebrough-Pond's USA Co., 125 F.3d 28 (2d Cir. 1997); sports drink slogans, SportFuel, Inc. v. PepsiCo, Inc., 932 F.3d 589 (7th Cir. 2019); spray-can labels, Sorensen v. WD-40 Co., 792 F.3d 712 (7th Cir. 2015); and newspaper T-shirts, Packman v. Chicago Tribune Co., 267 F.3d 628 (7th Cir. 2001). But a motion built on contested characterizations will fail and may be reversed on appeal, as in Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Management, Inc., 618 F.3d 1025 (9th Cir. 2010) and Tiffany v. Costco. See Summary Judgment Under Rule 56: Winning and Surviving Before Trial.

Step 9: If the plaintiff seeks emergency relief

Product-launch disputes often start with a motion for a temporary restraining order, which lasts no more than 14 days unless extended, followed by a preliminary injunction hearing. Fed. R. Civ. P. 65. The plaintiff must satisfy Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008), but a showing of likely success now carries a rebuttable presumption of irreparable harm under 15 U.S.C. § 1116(a). Rebut it with the plaintiff's delay and the absence of real-world harm. Because "the burdens at the preliminary injunction stage track the burdens at trial," Gonzales v. O Centro Espírita Beneficente União do Vegetal, 546 U.S. 418 (2006), the defendant must show that it is likely to prove descriptive fair use, so the declarations from step 2 need to be ready on day one. Ask expressly for a bond under Rule 65(c); the Second Circuit held in Vans that a district court need not set one if the enjoined party never asks. Offer a narrower order in the alternative, and remember that an order granting or refusing an injunction is immediately appealable under 28 U.S.C. § 1292(a)(1) within 30 days. Fed. R. App. P. 4. See Preliminary Injunction and TRO Application Checklist: A Practical Checklist.

Step 10: Trial, judgment, and fees

Either side may demand a jury under Fed. R. Civ. P. 38 when damages or profits are sought; a judge who tries the case must make findings under Fed. R. Civ. P. 52. Propose a fair use instruction that tracks the three statutory elements and tells the jury that some confusion is consistent with fair use; the Ninth Circuit's model civil instructions (chapter 15) are a useful starting point. Object to the instructions on the record before they are given, or the objection is lost. Fed. R. Civ. P. 51. Move for judgment as a matter of law before the case goes to the jury and renew the motion within 28 days after judgment. Fed. R. Civ. P. 50. If you win and the plaintiff's position was exceptionally weak or unreasonably litigated, move for fees under 15 U.S.C. § 1117(a) within 14 days of judgment, Fed. R. Civ. P. 54(d)(2); most circuits apply the totality-of-the-circumstances standard of Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014). See Lanham Act Attorney's Fees Under 15 U.S.C. § 1117(a): A Practical Guide and Bench Trial vs. Jury Trial Issues in Trademark Litigation: A Practical Guide.

Part two: defeating the defense, step by step

This part follows the brand owner. The theme throughout is the one Jack Daniel's made central: show that the defendant is using your mark, or something like it, as its own brand, and the fair use doctrines fall away.

Step 1: Investigate and document the use (before any letter)

Make dated captures of every accused use and buy the product, keeping the receipts, packaging, and hangtags. Search the USPTO records for the accused party's applications and registrations, check its social handles and hashtags, and look for product-line names, merchandise, and licensing announcements. Each of these is evidence of source-identifying use: VIP's own complaint, AJ Press's applications for PUNCHBOWL NEWS and PUNCHBOWL PRESS, and Mason Rothschild's use of "MetaBirkins" as the name of an NFT collection all became the brand owner's best exhibits. See Hermès International v. Rothschild, 654 F. Supp. 3d 268 (S.D.N.Y. 2023) (sending the case to a jury) and Hermès International v. Rothschild, 678 F. Supp. 3d 475 (S.D.N.Y. 2023) (upholding the verdict and entering a permanent injunction).

Audit your own house too. If your company or your licensees use the term descriptively in their own marketing, the defendant will find those uses. Confirm that you have used the ® notice; a registrant that fails to give notice cannot recover profits or damages for infringement unless the defendant had actual notice of the registration. 15 U.S.C. § 1111.

Step 2: Choose the claims, the defendants, and the forum (decision point)

• Infringement of a registered mark under 15 U.S.C. § 1114, or of an unregistered mark and false endorsement under 15 U.S.C. § 1125(a). The registration certificate is prima facie evidence of validity and ownership, 15 U.S.C. § 1057(b), and constructive notice of your claim, 15 U.S.C. § 1072, but neither defeats fair use, and knowledge of your mark is not bad faith by itself.
• Dilution only if the mark is a genuine household name, and only with a plan to meet the exclusions, which the defendant must prove. Rosetta Stone, 676 F.3d 144.
• False advertising when the real problem is a misleading comparison rather than a borrowed brand. A competitor has standing if its commercial interest in reputation or sales falls within the statute's zone of interests and the injury flows directly from the deception. Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014). See Bringing or Defending a False Advertising Claim: A Practical Guide.
• The right defendants. An award of the defendant's profits reaches only the profits of the defendants actually named, not those of unnamed affiliates. Dewberry Group, Inc. v. Dewberry Engineers Inc., 604 U.S. 321 (2025). If a sister company sells the goods, name it.
• Jurisdiction and forum. Federal courts have jurisdiction under 15 U.S.C. § 1121, 28 U.S.C. § 1331, and 28 U.S.C. § 1338, with supplemental jurisdiction over related state claims under 28 U.S.C. § 1367. Where venue is proper in more than one district, compare the circuits' nominative fair use rules; the Third Circuit's burden allocation is the most favorable to brand owners.

Step 3: Send a calibrated demand, or decide not to (decision point)

A demand letter invites a declaratory judgment action, so send one only if you are prepared to litigate in the recipient's home court. If you send one, identify each accused use, explain why it functions as a brand or implies endorsement, ask for specific changes, and set a realistic deadline. Avoid demands the law will not support, such as forbidding a repair shop to name the brand it repairs or a reseller to name what it sells; those demands produce publicity, declaratory actions, and fee motions, and the overbroad injunctions they seek get vacated (Tabari; Ty Inc. v. Perryman, 306 F.3d 509 (7th Cir. 2002)). See Drafting a Trademark Cease-and-Desist Letter and the Drafting a Trademark Cease-and-Desist Letter Checklist: A Practical Checklist.

Step 4: Plead around the defense

The complaint should anticipate fair use without pleading it away. Allege the facts that make the use source-identifying: prominence, placement where brands normally appear, stylization, ™ symbols, trademark applications, product-line naming, hashtag campaigns, and repetition across media (Kelly-Brown). Allege facts of bad faith if you have them, such as copying of your styling or adoption right after your campaign succeeded. For expressive works, allege why the use is a designation of source so that Rogers does not apply at the threshold. And plead confusion with marketplace facts rather than adjectives. A defendant that raises fair use in a Rule 12 motion must do the work itself; a court that dismisses on a defense the defendant never raised, without hearing from the plaintiff, invites reversal (Trader Joe's United). Motions to strike conclusory affirmative defenses under Fed. R. Civ. P. 12(f) are rarely worth the fee; contention interrogatories asking for the factual basis of each defense are usually more productive.

Step 5: Aim discovery at the elements the defendant must prove

Request the naming and design history, internal communications mentioning your brand, the alternatives the defendant considered (the availability of other words bears on fairness under the KP Permanent remand factors), clearance searches and opinions, merchandising and licensing plans, and sales and profit data broken down by accused use. Depose the people who chose the term. If the defendant relies on an opinion of counsel for good faith, demand the opinion and the communications around it. Pin down the defendant's position on every accused use with requests for admission, and collect your own evidence of actual confusion: misdirected customer service tickets, retailer inquiries, social media comments, and reviews. In Vans, comments on a sneaker podcast with MSCHF's chief creative officer as a guest were part of the actual-confusion record.

Step 6: Build survey and expert evidence that survives scrutiny

Design the confusion survey for the use actually at issue. Show respondents the accused product or ad as consumers encounter it, use a universe of the people who buy the defendant's goods (not your existing customers), and include a control that keeps everything except the element you contend causes confusion. In a parody or nominative case, phrase the questions so they do not invite respondents to apply their assumptions about legal permission. For dilution, an association survey must keep the marketplace context; the Charbucks survey failed because it presented the name stripped of the packaging on which consumers saw it. Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 736 F.3d 198 (2d Cir. 2013). Expect a challenge under Rule 702 and Kumho Tire Co. v. Carmichael, 526 U.S. 137 (1999), and retain a damages expert early if you will seek profits, because apportioning profits between the accused use and the defendant's other selling points takes time. See Trademark Consumer Survey Design: A Practical Checklist and Damages Apportionment in Trademark Cases: A Practical Guide.

Step 7: Seek emergency relief early, or not at all

Delay is the brand owner's worst enemy in injunction practice. The statutory presumption of irreparable harm is rebuttable, and months of waiting after learning of a launch is the most common rebuttal. Courts have also long rejected automatic injunctions. eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006). The model is Vans: suit filed four days before the product drop, a TRO and preliminary injunction less than two weeks after filing, an escrow of the revenues from shoes already sold, and an affirmance on appeal. Propose a tailored order that addresses the source-identifying use and leaves truthful reference alone, and be prepared to post security.

Step 8: Oppose summary judgment and try the case use by use

When the defendant moves for summary judgment, show genuine disputes on each element, use by use. Presentation that looks like branding creates a triable question on use as a mark, even next to a famous house mark. Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947 (7th Cir. 1992); Fortune Dynamic, 618 F.3d 1025. A phrase that borrows a famous hook rather than describing the product is not necessarily descriptive, and good faith is then a jury question. EMI Catalogue Partnership v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56 (2d Cir. 2000). In nominative cases, prominence and marquee value defeat the third New Kids factor, as in Brother Records, Inc. v. Jardine, 318 F.3d 900 (9th Cir. 2003) and Board of Supervisors for Louisiana State University v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008). And remember the opening KP Permanent left: the degree of likely confusion can bear on whether a use is fair. At trial, keep the theme simple ("they made our mark their brand") and drop the weakest referential uses before the jury sees them; a jury that thinks you are trying to stop people from telling the truth will punish the whole case, and a judge may award fees.

Special situations

At the TTAB. Fair use is a defense to infringement liability, not to registration, and the Board does not treat parody as a defense when an applicant seeks to register the parody as its own mark; it rejected parody arguments in sustaining oppositions to CRACKBERRY, Research in Motion Ltd. v. Defining Presence Marketing Group, Inc., 102 U.S.P.Q.2d 1187 (T.T.A.B. 2012), and to THE HOUSE THAT JUICE BUILT, New York Yankees Partnership v. IET Products & Services, Inc., 114 U.S.P.Q.2d 1497 (T.T.A.B. 2015). A business that wants to keep a descriptive term free should act at the Office: a letter of protest before publication under 37 C.F.R. § 2.149, an opposition on mere-descriptiveness grounds under 15 U.S.C. § 1052 within 30 days after publication (extendable up to 180 days from publication) under 15 U.S.C. § 1063, or a petition to cancel under 15 U.S.C. § 1064 before the registration turns five. Board decisions can be appealed or reviewed in a civil action under 15 U.S.C. § 1071, and a Board finding on likelihood of confusion can bind the parties in later litigation if the marks and uses are materially the same. B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138 (2015). See Filing a TTAB Notice of Opposition: A Practical Checklist.

Personal names. Section 1115(b)(4) also protects a person's use of his or her own name in business, which is why a hitch designer who had sold his company and its HENSLEY mark could still advertise that he designed a competitor's product (Hensley). But a founder who sold rights in the name may also be bound by contract, and the Second Circuit sent a designer's "by Joseph Abboud" ads back for a closer look at whether each one used his name descriptively or as a brand. JA Apparel Corp. v. Abboud, 568 F.3d 390 (2d Cir. 2009). Read the purchase agreement before relying on the statute. See Trademarking Your Own Name.

Certification and credential marks. People who hold a certification may say so, but embellishments that imply a higher status or the certifier's endorsement are actionable, and confusion about sponsorship counts. Security University, 823 F.3d 153 (the "Master CISSP" ads).

Resale, repair, and compatibility. Truthful statements that you sell, repair, or work with a branded product are protected if the presentation does not suggest authorization. Champion Spark Plug Co. v. Sanders, 331 U.S. 125 (1947); Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1969); Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010); Swarovski Aktiengesellschaft v. Building No. 19, Inc., 704 F.3d 44 (1st Cir. 2013). The limit is materially different or non-genuine goods; see Gray Market Goods and the First Sale Doctrine: Parallel Imports, Material Differences, and Exhaustion.

Comparative advertising. Naming the competitor's product to compare it is lawful, Smith v. Chanel, Inc., 402 F.2d 562 (9th Cir. 1968), and the FTC encourages it, 16 C.F.R. § 14.15. The Seventh Circuit reversed an injunction against candy packaging that announced "25% lower in calories than Werther's Original," with a ® symbol and a disclaimer explaining who made each product. August Storck K.G. v. Nabisco, Inc., 59 F.3d 616 (7th Cir. 1995). The exposure in comparative cases is falsity, not borrowing.

Online uses. Keyword purchases are judged by the ad that results, with labeling doing most of the work. Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011); Multi Time Machine, Inc. v. Amazon.com, Inc., 804 F.3d 930 (9th Cir. 2015). Metatags that describe are treated like visible description. Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002). Cybersquatting claims list "bona fide noncommercial or fair use" as a factor against bad faith in § 1125(d), and the UDRP has a parallel safe harbor (Policy ¶ 4(c)(iii)). See Enforcing Trademarks Against Online Sellers and Platforms: A Practical Guide.

Expressive works after Jack Daniel's. For the title or content of a single book, film, song, game, or artwork, move early under Rogers; courts dismissed or granted summary judgment in cases over the Hangover film, Louis Vuitton Malletier S.A. v. Warner Bros. Entertainment Inc., 868 F. Supp. 2d 172 (S.D.N.Y. 2012), and Call of Duty, AM General LLC v. Activision Blizzard, Inc., 450 F. Supp. 3d 467 (S.D.N.Y. 2020). In the Second Circuit, a finding of likely confusion must be "particularly compelling" to make an expressive use explicitly misleading. Twin Peaks Productions, Inc. v. Publications International, Ltd., 996 F.2d 1366 (2d Cir. 1993). But when the same title also names a merchandise line, a series sold as a brand, or a business, expect an ordinary confusion analysis (Punchbowl, Hermès). For persona claims that travel with these disputes, see Clearing Expressive Works Against Right of Publicity Claims: A Practical Guide.

Dilution claims. Plead the § 1125(c)(3) exclusions as defenses and prove them. A parody that keeps its own brand separate from the parodied mark can qualify, Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 156 F. Supp. 3d 425 (S.D.N.Y. 2016), while one used as the product's name cannot use the exclusion, although its humor may still defeat blurring. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007). The doctrine is covered in Trademark Dilution Under the TDRA: Blurring, Tarnishment, and What It Means to Be Famous.

How courts actually apply the defenses: a circuit table

Full citations for the cases the table names that are not cited elsewhere in this guide: Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983); Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658 (5th Cir. 2000); PACCAR Inc. v. TeleScan Technologies, L.L.C., 319 F.3d 243 (6th Cir. 2003); Parks v. LaFace Records, 329 F.3d 437 (6th Cir. 2003); ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003); Radiance Foundation, Inc. v. NAACP, 786 F.3d 316 (4th Cir. 2015); International Stamp Art, Inc. v. United States Postal Service, 456 F.3d 1270 (11th Cir. 2006); Hard Candy, LLC v. Anastasia Beverly Hills, Inc., 921 F.3d 1343 (11th Cir. 2019); and University of Alabama Board of Trustees v. New Life Art, Inc., 683 F.3d 1266 (11th Cir. 2012).

The Second Circuit's confusion factors come from Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961). Before filing or answering anywhere else, read the circuit's most recent fair use decision; these tests move.

Timeline and costs at a glance

The figures below are rough planning ranges per side for a mid-sized dispute, drawn from experience rather than any survey; big-brand cases with several surveys and a jury trial cost more, and many small disputes end for a few thousand dollars. The AIPLA's biennial Report of the Economic Survey publishes median litigation costs by amount at risk and is worth checking when budgeting.

Worked example: the sunscreen tagline, from demand letter to settlement

The facts. Solace Skin Labs, a New Jersey company, owns an incontestable registration for MINERAL SHIELD for sunscreen. Brightwater Naturals, a Brooklyn startup, launches a zinc-based sunscreen. Four uses matter: (1) the front label, where BRIGHTWATER appears in large type above "daily mineral sunscreen SPF 30" and, in smaller lowercase type, "reef-friendly mineral shield"; (2) a marketplace listing titled "Brightwater Daily Mineral Sunscreen SPF 30, Reef-Friendly Mineral Shield"; (3) a summer social campaign built on the hashtag #MineralShieldSummer; and (4) a website banner reading "MINERAL SHIELD™ SEASON" in very large type. Two months after launch, Solace's counsel sends the letter described at the top of this guide.

Month 0 to 1: classification, preservation, and response. Brightwater's counsel classifies the uses. The label and the listing are descriptive: zinc oxide sits on the skin and physically blocks ultraviolet light, and "mineral" and "shield" are how dermatologists and competitors describe it. The banner is a source-identifying use; the ™ symbol says so on its face. The hashtag campaign is in between, because a repeated campaign slogan can look like brand-building (Kelly-Brown). The litigation hold turns up a helpful naming brief listing "mineral shield," "physical barrier," and "mineral block" as descriptive phrases, a clearance report that flagged Solace's registration, and a brand manager's chat message: "Solace owns MINERAL SHIELD, but it's literally what zinc does. Fine on the label, just don't make it our name." It also turns up an unhelpful agency deck promising to "own the mineral shield conversation this summer."

Brightwater's response letter retires the banner and the ™, replaces the hashtag with #ReefFriendlySPF, keeps the label and listing, cites § 1115(b)(4), KP Permanent, Cosmetically Sealed, and Car-Freshner, declines to destroy inventory or account for profits, and reserves all rights. It never calls "mineral shield" a Brightwater mark. Cost so far: about $9,000.

Month 1: the declaratory judgment decision. Brightwater considers filing first in the Eastern District of New York. Solace has never sued anyone, Brightwater is already in the Second Circuit, and the changes it made remove the strongest part of Solace's case, so it waits.

Month 3 to 4: complaint and answer. Solace sues in the Southern District of New York for infringement under §§ 1114 and 1125(a) and for unfair competition under New York law. It does not seek a preliminary injunction; by now three months have passed and the banner is gone. Brightwater answers within 21 days, pleading descriptive fair use with facts (the paragraph quoted in step 5 above), denying likely confusion, and counterclaiming for a declaration of noninfringement. It does not counterclaim to cancel the registration for descriptiveness, because incontestability forecloses that attack (Park 'N Fly).

Months 4 to 12: discovery. Solace's corporate representative testifies that Solace knows of no instance of actual confusion and that Solace's own website FAQ says its product provides "mineral shield protection," in lowercase. Brightwater collects dermatology articles, competitor listings using the same words descriptively, and dictionary definitions. Solace's survey expert runs a test showing respondents the Brightwater product page with the old banner and reports 19 percent net confusion; the control removed the word "shield" and also changed the packaging colors. Brightwater's rebuttal expert attacks the stimulus (it showed a banner retired months earlier) and the control (it changed two variables at once). Brightwater moves to exclude the survey under Rule 702; the court denies the motion and treats the flaws as going to weight.

Month 14: summary judgment. The court grants summary judgment to Brightwater on the label and the listing: the phrase appears in lowercase beneath a dominant house mark, it describes the product's mechanism, alternatives would have been less natural, and the chat message shows Brightwater intended to describe rather than to brand. Solace's survey does not change the result, because some confusion is consistent with fair use and the survey tested the retired banner. The court denies summary judgment on the banner and the hashtag period, finding a triable question whether those uses functioned as a mark, and noting the ™ symbol and the agency deck.

Month 16: settlement. With exposure limited to ten weeks of banner and hashtag use, the parties settle: Solace dismisses with prejudice, Brightwater agrees not to resume the banner or the hashtag, and each side bears its own fees. Brightwater has spent about $380,000, including $60,000 on its rebuttal expert; Solace has spent more, including its survey.

What each side should take from it. For Brightwater, the one use that cost real money was the banner with the ™, a use a two-line clearance memo would have caught. The naming brief and the candid chat message were worth more than any expert. For Solace, a letter limited to the banner and the hashtag would almost certainly have produced the same changes in a week, at the price of a few hours of legal time, without a published opinion holding that "mineral shield" is descriptive when used on the label of a mineral sunscreen.

Common mistakes

When asserting the defense

• Answering the letter by calling the disputed words "our tagline" or "our mark," which turns a description into an admission of source-identifying use.
• Defending every use instead of retiring the one or two that look like branding.
• Pleading "fair use" in a single sentence with no facts, or leaving out the dilution exclusions and constitutional arguments.
• Waiting until summary judgment to collect evidence of descriptive meaning and third-party use.
• Commissioning an expensive survey when a disciplined critique of the plaintiff's survey would do, or ignoring a survey that tested the wrong stimulus.
• Forgetting to ask for a bond when an injunction issues.

When defeating the defense

• Sending a demand that the law cannot support, and getting a declaratory judgment action in the recipient's home court.
• Pleading conclusions ("Defendant uses Plaintiff's mark as a mark") instead of the facts that prove it.
• Treating incontestability as an answer to fair use.
• Relying on a survey whose universe, stimulus, or control does not match the accused use, or whose questions test legal beliefs.
• Waiting months to seek a preliminary injunction.
• Taking weak referential uses to trial alongside strong ones and losing credibility on both.

Frequently asked questions

How long do I have to respond to a cease-and-desist letter? No rule sets a deadline; the date in the letter is a negotiating position. Respond promptly, ask for a short extension if you need to investigate, and preserve documents from day one.

Do I have to plead fair use in my answer? Yes. Descriptive fair use is an affirmative defense under Rule 8(c), and omitting it risks waiver. If facts emerge later, move to amend under Fed. R. Civ. P. 15 promptly.

Can I win on a motion to dismiss? Sometimes, when the complaint and the materials it relies on show descriptive or referential use and no plausible bad faith (Hensley). More often fair use is decided on summary judgment, and since Jack Daniel's the threshold question of source-identifying use is frequently factual.

Do I need a survey? Neither side is required to have one. The brand owner carries the burden on confusion, so a defendant can often rely on cross-examination and a rebuttal expert. A brand owner without a survey needs strong actual-confusion evidence or a compelling presentation of the accused use.

I already changed the use. Is the case over? Not necessarily. The brand owner may still seek damages or profits for past use, but voluntary changes usually reduce exposure, support good faith, and can make an injunction unnecessary.

What can the brand owner recover if I lose? An injunction, and under § 1117(a), subject to the principles of equity, the defendant's profits, the plaintiff's damages, and costs, with attorney's fees in exceptional cases. Willfulness is not required for a profits award but matters a great deal. Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 212 (2020).

Does the TTAB decide fair use? No. The Board decides registrability only. A business that wants to keep a descriptive term available should use letters of protest, oppositions, and cancellation petitions, and keep its fair use arguments for court.

Who decides fair use, the judge or the jury? It is a fact question, so a jury decides it if either side demands one and legal remedies are at stake; otherwise the judge decides it after a bench trial with findings under Rule 52.

Practical takeaways

• Classify every use, separately, and retire the ones that look like branding before you defend the rest.
• Build the adoption record early. Naming briefs, alternatives, and candid internal messages win descriptive fair use cases.
• Never call a borrowed term your mark in letters, pleadings, applications, or press.
• Plead every defense with facts, including dilution exclusions and constitutional challenges, and file the Rule 5.1 notice when you challenge a statute.
• Know your circuit's nominative rule before choosing a forum or framing a motion.
• Attack surveys for what they measure, not just how they were run.
• Brand owners should prove source-identifying use with the defendant's own conduct, and demand cures the law will actually give.
• Move fast or not at all on injunctions, and ask for or plan for a bond.
• Budget realistically. Most of the cost is discovery and experts; most of the value is in the documents you already have.

This document is general information, not legal advice for any particular situation; the law changes, and the facts matter.

Related Documents

Related Articles

• Trademark Fair Use: Descriptive Use, Nominative Use, and Expressive Works After Jack Daniel's: the doctrine behind every step in this guide.
• Trademark Dilution Under the TDRA: Blurring, Tarnishment, and What It Means to Be Famous: fame and the dilution exclusions.
• Trademark Liability Online: Keyword Advertising, Marketplaces, and Contributory Infringement After Tiffany v. eBay: keyword ads and marketplace resale.
• Answering a Federal Complaint: Denials, Affirmative Defenses, Counterclaims, and Judgment on the Pleadings: the pleading framework for affirmative defenses.
• Declaratory Judgment Actions: Jurisdiction, Discretion, and the Race to the Courthouse: filing first after a demand letter.
• Summary Judgment Under Rule 56: Winning and Surviving Before Trial: where most fair use cases are decided.
• Preliminary Injunctions and Temporary Restraining Orders: Emergency Relief in Federal Court: launch-day injunction practice.
• Responding to a Trademark Cease-and-Desist Letter: the first response, in detail.

Related Guides

• Proving Acquired Distinctiveness and Defeating a Genericness Challenge: A Practical Guide: when the fight is about the strength of a descriptive mark.
• Enforcing Trademarks Against Online Sellers and Platforms: A Practical Guide: resale and platform enforcement.
• Clearing Expressive Works Against Right of Publicity Claims: A Practical Guide: clearance for creative works.
• Drafting an Answer and Affirmative Defenses: A Practical Guide: drafting the defenses in step 5.
• Consumer Survey Expert Methodology in Trademark Cases: A Practical Guide: survey design and critique.
• Polaroid Factors on Summary Judgment in the Second Circuit: A Practical Guide: Second Circuit summary judgment practice.

Related Checklists

• Trademark Fair Use Analysis Checklist: A Practical Checklist: the element-by-element analysis as a checklist.
• Trademark Likelihood-of-Confusion Analysis: A Practical Checklist: the factor tests in each circuit.
• Summary Judgment Motion Checklist: A Practical Checklist: building and opposing the motion.
• Declaratory Judgment Checklist: A Practical Checklist: the file-first decision.
• Answer and Affirmative Defenses Checklist: A Practical Checklist: pleading every defense on time.

Related Toolkits

• Trademark Fair Use Toolkit: Nominative Use Guidelines, Comparative Advertising Clearance, and Defense Briefing: templates for clearance memos, response letters, and briefing.
• Trademark Enforcement and Litigation Toolkit: From Watching to Verdict and Appeal: forms across the life of the case.
• Responsive Pleading Toolkit: Answer Templates, Affirmative Defense Libraries, and Counterclaim Outlines: answer and counterclaim templates.
• TTAB Practice Toolkit: Oppositions, Cancellations, and the Trademark Trial and Appeal Board from Pleading to Appeal: Board procedure for descriptive-term disputes.