Trademark Fair Use: Descriptive Use, Nominative Use, and Expressive Works After Jack Daniel's

Summary. A trademark gives its owner control over a signal of source, not ownership of words, images, or the right to talk about the brand. This article explains the three doctrines that mark that boundary: classic descriptive fair use under 15 U.S.C. § 1115(b)(4), nominative fair use for truthful references to a mark owner and its products, and the special treatment of expressive works and parody under Rogers v. Grimaldi and the dilution exclusions in § 1125(c)(3). It walks through the leading cases from KP Permanent Make-Up and New Kids on the Block to the Supreme Court's 2023 decision in Jack Daniel's Properties v. VIP Products, which held that Rogers does not apply when the accused use functions as a source identifier for the user's own goods. It then shows how courts have applied that rule in Vans v. MSCHF, Punchbowl v. AJ Press, Hermès v. Rothschild, and the Bad Spaniels remand, and how the circuits still divide on burdens and tests for nominative use. Practical sections cover procedure, evidence, strategy for brand owners and accused users, costs, common mistakes, and worked examples involving a repair shop, a craft brewery parody, and a SaaS comparison chart, followed by an FAQ and takeaways.

An independent repair shop puts "We fix Kestrel e-bikes" on its sign and receives a cease-and-desist letter. A cosmetics company prints "deliciously kissable love potion" on a perfume box that sits on a shelf near a small competitor's LOVE POTION oil. An art collective sells a squiggly, melted-looking version of a famous skate shoe and calls it commentary. All three used someone else's trademark. The perfume company won on summary judgment, the art collective lost an injunction fight on appeal, and the repair shop, if it words its sign carefully, should never see a courtroom.

The difference is not luck. Trademark law has always left room for people to use words in their ordinary sense, to name the brands they sell, fix, or compare against, and to make art and jokes about famous marks. That room goes by the loose label "trademark fair use," and its borders moved in June 2023 when a unanimous Supreme Court decided the case of the Bad Spaniels dog toy. This article maps the borders as they stand in 2026, for the lawyer drafting the brief and for the business owner wondering whether the comparison chart on the website is a lawsuit waiting to happen.

The short answer

Trademark law protects a mark as a signal of source. It does not give the owner a monopoly on the words in the mark, a veto over truthful references to its products, or control over commentary and art. Three doctrines enforce those limits:

1. Classic (descriptive) fair use. A defendant may use a term "otherwise than as a mark" to describe its own goods, fairly and in good faith, even if the term is part of someone's registered mark. 15 U.S.C. § 1115(b)(4). The plaintiff still has to prove likely confusion, and some confusion can coexist with a fair use. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004).
2. Nominative fair use. A defendant may use the plaintiff's mark to refer to the plaintiff or its products (to resell, repair, compare, review, or criticize) if the product is not readily identifiable without the mark, the defendant uses only as much of the mark as it needs, and nothing suggests sponsorship. New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992). The circuits disagree about whether this is a defense or a substitute test for confusion, and about who carries the burden.
3. Expressive works and parody. For titles and content of books, films, songs, games, and art, many courts apply Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which bars a Lanham Act claim unless the use has no artistic relevance or explicitly misleads. But after Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023), Rogers does not apply when the defendant uses the mark as a source identifier for its own goods. Parody then matters only inside the ordinary likelihood-of-confusion analysis, and the dilution statute's parody exclusion likewise disappears when the parody is used as a mark.

The working question in almost every case is therefore the same one the Supreme Court made central in 2023: is the defendant using the mark as a mark? If yes, expect a full confusion fight. If no, the fair use doctrines usually decide the case, often early.

The legal framework: what a trademark owns and what it leaves free

A mark is a signal, not a word

The Lanham Act defines a trademark as a word, name, symbol, or device used "to identify and distinguish" a person's goods and "to indicate the source of the goods." 15 U.S.C. § 1127. Infringement of a registered mark requires a use in commerce that is "likely to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1114. The parallel claim for unregistered marks and false endorsement lives in 15 U.S.C. § 1125(a). Likelihood of confusion means a probability (not a possibility) that an appreciable number of ordinarily prudent buyers will be confused about source, sponsorship, or affiliation; each circuit tests it with a list of factors, such as the Second Circuit's Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961) factors and the Ninth Circuit's AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) factors. Our Trademark Likelihood-of-Confusion Analysis: A Practical Checklist walks through those tests.

Everything in this article follows from that structure. A trademark owner is protected against confusing uses of its signal. It is not protected against the language.

The Supreme Court said this a century ago

The modern doctrines are restatements of old ideas. In 1924 Justice Holmes allowed a company that repackaged genuine Coty powder to say so on its labels: "When the mark is used in a way that does not deceive the public we see no such sanctity in the word as to prevent its being used to tell the truth. It is not taboo." Prestonettes, Inc. v. Coty, 264 U.S. 359 (1924). Fourteen years earlier he had allowed makers of an imitation mineral water to tell the public what they were copying, because a contrary rule would turn a trademark into "a monopoly of her type of bitter water." Saxlehner v. Wagner, 216 U.S. 375 (1910). The same year as Prestonettes, the Court held that using a similar name "to truthfully describe his own product does not constitute a legal or moral wrong." William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526 (1924). And in 1947 it let a dealer sell reconditioned spark plugs under the original brand, so long as "repaired" or "used" appeared clearly on the plug. Champion Spark Plug Co. v. Sanders, 331 U.S. 125 (1947).

The Restatement (Third) of Unfair Competition § 28 states the descriptive version of the principle, and J. Thomas McCarthy's treatise organizes the modern law around the same split this article uses: classic fair use (McCarthy on Trademarks and Unfair Competition §§ 11:45 to 11:49), nominative fair use (§ 23:11), and free speech, parody, and expressive works (§§ 31:153 to 31:156).

The statutory hooks, in one table

Two features of the statute catch people by surprise. First, the fair use defense survives incontestability. An incontestable registration (one that has passed five years of continuous use and a filing under 15 U.S.C. § 1065) cannot be attacked as merely descriptive, Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985), but § 1115(b) expressly makes incontestable status subject to the descriptive fair use defense. KP Permanent itself involved an incontestable registration for MICRO COLORS. Second, "fair use" in trademark law has almost nothing in common with fair use in copyright law under 17 U.S.C. § 107. There are no four factors and no "transformative use" inquiry; a parody that wins a copyright case can lose a trademark case on the same facts. If you work on both sides of that line, our Copyright Fair Use: The Four Factors, Transformative Use, and What Warhol Changed covers the copyright half.

Classic descriptive fair use under § 1115(b)(4)

Section 33(b)(4) of the Lanham Act protects a use "otherwise than as a mark" of "a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin," and it also protects a person's use of his or her own name in business. 15 U.S.C. § 1115(b)(4). Courts break the defense into three elements, as the Second Circuit did in Kelly-Brown v. Winfrey, 717 F.3d 295 (2d Cir. 2013): the defendant used the term (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith. The defense exists because the first company to register a descriptive word should not be able to stop everyone else from describing their own products in plain English.

The burden question that KP Permanent settled

Before 2004, some courts (the Ninth Circuit most prominently) held that a defendant could not claim fair use if there was any likelihood of confusion. The Supreme Court rejected that rule in KP Permanent. Lasting Impression held an incontestable registration for a MICRO COLORS logo for permanent makeup pigments; KP had used the word "microcolor" since about 1990 and put it in large, stylized type in a 1999 brochure. The Court held that the party asserting the defense "does not have a burden to negate any likelihood that the practice complained of will confuse consumers." KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004). The plaintiff proves confusion as part of its case; the defendant need only "leave the factfinder unpersuaded" on that point, and "some possibility of consumer confusion" is compatible with fair use, given "the undesirability of allowing anyone to obtain a complete monopoly on use of a descriptive term simply by grabbing it first."

The Court left a door open: the degree of likely confusion may still bear on whether a use is "fair." On remand, the Ninth Circuit listed the considerations that now appear in briefs everywhere: the degree of likely confusion, the strength of the mark, the descriptive nature of the term for the defendant's product, the availability of alternative descriptive terms, the extent of the defendant's use before the plaintiff registered, and differences in the times and contexts of the defendant's uses. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596 (9th Cir. 2005). Twelve years later the same court stressed that each materially different use gets its own analysis, reversing a summary judgment that had treated a catalog title, a promotional reference to "the 2011 Norwood All in ONE catalogue," and an online "ALL in ONE Basket" ad as one use. Marketquest Group, Inc. v. BIC Corp., 862 F.3d 927 (9th Cir. 2017).

Element one: use "otherwise than as a mark"

The most contested element asks whether the defendant used the words as its own brand. The Second Circuit equates trademark use with use of a term "as a symbol to attract public attention." JA Apparel Corp. v. Abboud, 568 F.3d 390 (2d Cir. 2009). The cases look at concrete, provable features of the use:

• Size, style, and placement. In Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Management, Inc., 618 F.3d 1025 (9th Cir. 2010), Victoria's Secret printed "Delicious" in large silver letters across the chest of a pink tank top. Fortune owned an incontestable DELICIOUS registration for footwear. A jury could find trademark use, the court held, in part because the word was presented the same way the retailer presents its own PINK and VERY SEXY marks.
• Repetition and pattern. A plaintiff plausibly alleged trademark use where "Own Your Power" ran on a magazine cover, named a live event, and headed a section of a website; the court inferred an attempt to build a sub-brand. Kelly-Brown, 717 F.3d 295.
• Precautions, or their absence. Labels, disclaimers, and lowercase sentence-style presentation all suggest description; a ™ symbol, a domain name, or a trademark application suggest the opposite. When Gatorade registered "Gatorade The Sports Fuel Company," it disclaimed "The Sports Fuel Company" after the PTO advised that the phrase was merely descriptive, and the Seventh Circuit later affirmed summary judgment of fair use against the owner of SPORTFUEL. SportFuel, Inc. v. PepsiCo, Inc., 932 F.3d 589 (7th Cir. 2019).
• The house mark helps, but it is not a free pass. In Cosmetically Sealed Industries, Inc. v. Chesebrough-Pond's USA Co., 125 F.3d 28 (2d Cir. 1997), the words "Seal it with a Kiss!!" on a lipstick display were dwarfed by CUTEX and COLOR SPLASH, and the court found fair use against the owner of SEALED WITH A KISS. But in Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947 (7th Cir. 1992), the Seventh Circuit held that "Gatorade is Thirst Aid" used THIRST AID as a mark despite the famous house brand next to it: "Nor is a defendant's use of a term in conjunction with its own trademark per se a use 'other than as a trademark.'"

One procedural note from Kelly-Brown matters in New York: the Second Circuit rejected the idea that a plaintiff must plead and prove the defendant's "use as a mark" as a threshold element of infringement. Trademark use is part of the defendant's fair use defense, not the plaintiff's prima facie case.

Element two: use in a descriptive sense

The defendant must use the term in its ordinary, primary meaning to describe a feature of its own goods: an ingredient, a flavor, a function, a shape, a quality, or a geographic origin. Classic examples:

• "Fish fry" on batter mixes, despite Zatarain's FISH-FRI. Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983).
• "Larvicide" for a larvae-killing agent, despite LARVACIDE. Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178 (5th Cir. 1980).
• "Sweet-tart" in Ocean Spray's cranberry juice advertising, despite SWEETARTS candy. Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055 (7th Cir. 1995).
• A pine-tree-shaped Glade Plug-Ins freshener sold at Christmas, despite the famous LITTLE TREES shape; the tree described both the pine scent and the season. Car-Freshner Corp. v. S.C. Johnson & Son, Inc., 70 F.3d 267 (2d Cir. 1995).
• Perforated borders on Postal Service greeting cards that depict stamps. International Stamp Art, Inc. v. United States Postal Service, 456 F.3d 1270 (11th Cir. 2006).
• "Hard Candy" as the name of a glossy highlighter shade, because it described the sheen, and the industry routinely names shades with evocative words. Hard Candy, LLC v. Anastasia Beverly Hills, Inc., 921 F.3d 1343 (11th Cir. 2019).
• "Long-Term Corrosion Inhibitor" on a WD-40 Specialist can, despite THE INHIBITOR. Sorensen v. WD-40 Co., 792 F.3d 712 (7th Cir. 2015).

Two refinements matter in practice. First, the classification of the plaintiff's mark is beside the point. Car-Freshner found fair use of a design mark that was nowhere near the descriptive tier, and Fortune Dynamic holds that a defendant may use a word in its descriptive sense "regardless of" whether the plaintiff's mark is descriptive, suggestive, arbitrary, or fanciful. Second, the Second Circuit reads "descriptive" generously. It found fair use where "Seal it with a Kiss!!" invited shoppers to kiss a postcard, and the Seventh Circuit did the same where the Chicago Tribune reproduced its front-page headline "The joy of six" on T-shirts after the Bulls' sixth title. Packman v. Chicago Tribune Co., 267 F.3d 628 (7th Cir. 2001).

The defense fails when the "description" is really a borrowed hook. Spalding's golf ad flashed "Swing Swing Swing," evoking the Benny Goodman standard "Sing, Sing, Sing" over swing-style music; the Second Circuit agreed the phrase was not used as a mark but reversed summary judgment for the advertiser anyway: the ordinary word for what a golfer does is "swing," the tripled, alliterative phrase was not necessarily descriptive, and whether it was used descriptively and in good faith was a question for trial. EMI Catalogue Partnership v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56 (2d Cir. 2000). Kelly-Brown made the same point about "Own Your Power," which, unlike "sealed with a kiss," is not a fixture of the language.

Element three: fairly and in good faith

Good faith asks whether the defendant intended to trade on the plaintiff's goodwill by creating confusion. EMI, 228 F.3d 56. The cases are consistent on what does not prove bad faith:

• Mere knowledge of the plaintiff's mark. Packman, 267 F.3d 628; Star Industries, Inc. v. Bacardi & Co., 412 F.3d 373 (2d Cir. 2005).
• Adopting a descriptive term without consulting counsel. Car-Freshner, 70 F.3d 267.
• Skipping a trademark search, or continuing after a cease-and-desist letter, standing alone. Dessert Beauty, Inc. v. Fox, 568 F. Supp. 2d 416 (S.D.N.Y. 2008), aff'd, Dessert Beauty, Inc. v. Fox, 329 F. App'x 333 (2d Cir. 2009). The owner of an incontestable LOVE POTION registration for perfume oils had sent roughly eighty demand letters; the court still held that the Jessica Simpson-endorsed Dessert Beauty line could sell a "deliciously kissable love potion fragrance" under its own prominent DESSERT branding.

What does count against the defendant: evidence that it chose the term because of the plaintiff's success, a presentation that mimics the plaintiff's styling, the availability of plainly better descriptive words, and a high degree of likely confusion. Prominent use of the defendant's own house mark points the other way, which is why careful copywriters put the brand name in the biggest type on the page.

Personal names

The statute separately protects a person's use of "his or her individual name in his own business." Designers and founders who sell their companies and their names test this regularly. Jim Hensley sold his hitch company and the HENSLEY mark, then joined a competitor whose ads said that "Jim Hensley," the hitch's original designer, had designed the new product; the Sixth Circuit found no likelihood of confusion and, alternatively, fair use. Hensley Manufacturing v. ProPride, Inc., 579 F.3d 603 (6th Cir. 2009). Joseph Abboud fared less well at first: after selling his name, his planned "by designer Joseph Abboud" ads for a new line went to trial, and the Second Circuit remanded for a closer look at whether each ad used the name descriptively or as a brand. JA Apparel, 568 F.3d 390. For founders thinking about these issues before a sale, see Trademarking Your Own Name.

A note on the TTAB

Descriptive fair use is a defense to infringement liability. It does little work in an opposition or cancellation proceeding before the Trademark Trial and Appeal Board, where the applicant is asking the Office to register the term as a mark; an applicant cannot coherently claim to use a term "otherwise than as a mark" while seeking registration of it. The Board's tools for descriptive terms are refusals and challenges under 15 U.S.C. § 1052 (mere descriptiveness and the like) and cancellation under 15 U.S.C. § 1064. For the distinctiveness side of the story, see the companion article Genericness, Genericide, and Acquired Distinctiveness: Where Trademark Protection Begins and Ends.

Nominative fair use: using a brand to talk about the brand

Classic fair use protects a defendant who describes its own product with words that happen to be in someone's mark. Nominative use is the opposite situation: the defendant uses the plaintiff's mark to name the plaintiff or the plaintiff's product, usually because there is no other sensible way to do it. A reseller says it sells Tiffany jewelry, a mechanic says she fixes Volkswagens, a software vendor says it integrates with Salesforce, a reviewer says the new phone is worse than last year's. The Ninth Circuit coined the term and explained the need: "it is often virtually impossible to refer to a particular product for purposes of comparison, criticism, point of reference or any other such purpose without using the mark."

The New Kids test

Two newspapers ran telephone polls asking readers which member of the boy band New Kids on the Block was the most popular, charging for the calls. The band sued. Judge Kozinski's opinion held the use permissible and set out three requirements: (1) the product or service is not readily identifiable without use of the mark; (2) only so much of the mark is used as is reasonably necessary to identify it; and (3) the user does nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the mark holder. New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).

The Ninth Circuit has since refined each step:

• Words, not trade dress. A former Playmate of the Year could describe herself as "Playboy Playmate of the Year 1981" on her website and in its metatags, but the repeated "PMOY '81" wallpaper across every page failed the test because it did not describe her at all; it was decoration built from the mark. Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002). Using the plain words, without the owner's stylized lettering or logo, is the safest form of reference, a point the court repeated in Applied Underwriters, Inc. v. Lichtenegger, 913 F.3d 884 (9th Cir. 2019).
• The test replaces the usual factors. When a defendant uses the mark to describe the plaintiff's product, even if the defendant's ultimate goal is to sell its own product, the New Kids test replaces the eight Sleekcraft factors. Cairns v. Franklin Mint Co., 292 F.3d 1139 (9th Cir. 2002) (commemorative Princess Diana merchandise).
• The plaintiff keeps the burden. A Lexus broker doing business at sites like buyorleaselexus.com needed only to show that it used LEXUS to refer to Lexus cars; the burden then "reverts to the plaintiff to show a likelihood of confusion." The court held its earlier burden-shifting language "effectively overruled" by KP Permanent, found that the broker's use of the stylized mark and the "L" logo went too far, credited a later prominent disclaimer, and vacated an injunction that would have barred every domain name containing "Lexus." Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010).
• Marquee value is not reference. Al Jardine's touring band, billed as "Beach Boys Family & Friends" and sometimes simply "The Beach Boys," failed the third step; promoters booked it thinking they were getting the Beach Boys. Brother Records, Inc. v. Jardine, 318 F.3d 900 (9th Cir. 2003). A website operator who sprinkled PYCNOGENOL through his pages to borrow the brand's cachet for his own products failed it too. Horphag Research Ltd. v. Pellegrini, 337 F.3d 1036 (9th Cir. 2003).

Resale, repair, and compatibility

The oldest nominative cases involve people who sell or service genuine goods. The Supreme Court's repackaging and reconditioning decisions (Prestonettes and Champion) allow truthful use with clear disclosure. The Ninth Circuit held in 1969 that an independent mechanic could advertise that he repaired Volkswagens, using the word "Independent," so long as he did not suggest he belonged to the authorized dealer network. Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1969). Thirty-five years later the Fifth Circuit affirmed summary judgment for a one-man vacuum shop whose Yellow Pages ad listed KIRBY among the brands it sold and serviced, with a line that should be on every franchise lawyer's wall: "Prominent and pervasive use of a mark will suggest affiliation, but mere reference to a marked product will not." Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477 (5th Cir. 2004). The brand owner's survey carried little weight because its universe came from the company's own lists of Kirby owners rather than the people likely to read the ad and buy repairs, and its questions were flawed.

Online resale follows the same rules. The Second Circuit held that eBay's own use of TIFFANY to advertise genuine Tiffany goods actually available on its site was lawful, because it described the plaintiff's product and did not imply a false affiliation. Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010). The First Circuit vacated a preliminary injunction that would have forced a discount retailer to shrink the word "Swarovski" in a newspaper ad for genuine Swarovski figurines it had acquired, explaining that the risk in nominative cases is confusion about "endorsement or affiliation," not source, and that a court must actually find that risk before enjoining anything. Swarovski Aktiengesellschaft v. Building No. 19, Inc., 704 F.3d 44 (1st Cir. 2013). The secondary-liability and keyword sides of these disputes are covered in the companion article Trademark Liability Online: Keyword Advertising, Marketplaces, and Contributory Infringement After Tiffany v. eBay, and the limits of the resale right (material differences, gray goods) in Gray Market Goods and the First Sale Doctrine.

Comparative advertising

A seller may name a competitor's product to compare against it. The leading case involved a perfume called "Second Chance," advertised as a duplicate of Chanel No. 5 at a fraction of the price. The Ninth Circuit held that, absent misrepresentation or confusion about source or sponsorship, the seller could identify the product it had copied; a contrary rule would let the trademark extend "to a monopoly of the product," as Holmes had warned in Saxlehner. Smith v. Chanel, Inc., 402 F.2d 562 (9th Cir. 1968). Federal Trade Commission policy points the same way: the Commission's statement on comparative advertising encourages truthful naming of competitors. 16 C.F.R. § 14.15.

Three limits keep comparative advertising honest. First, the comparison must be true; a false claim of equivalence or superiority is false advertising under 15 U.S.C. § 1125(a)(1)(B), and nominative fair use is no defense to falsity. Second, the reference must not imply endorsement. Third, mocking the competitor's mark itself can create separate exposure: the Second Circuit affirmed a preliminary injunction, under New York's dilution statute, against a television ad in which John Deere's leaping-deer logo was redrawn, animated, and chased by a rival tractor and a barking dog. Deere & Co. v. MTD Products, Inc., 41 F.3d 39 (2d Cir. 1994). The falsity side of the problem is covered in depth in False Advertising Under the Lanham Act: Literal Falsity, Materiality, and Competitor Standing.

How courts actually apply nominative use: the circuit map

Every circuit lets people refer truthfully to other people's products. They disagree about the analytical box, and the box decides who carries the burden on a summary judgment record.

The Third Circuit's version came from a dispute in which LendingTree's website promised access to "a national network of brokers representing the country's leading real estate companies, including Coldwell Banker, ERA and Century 21," and showed a Coldwell Banker yard sign. The court held that only some Lapp factors fit nominative cases (price and care, length of time without confusion, intent, and actual confusion), and that a defendant who loses on confusion can still win by showing that its use was necessary to describe both parties' services, used only what was needed, and accurately portrayed the parties' relationship. Century 21 Real Estate Corp. v. LendingTree, Inc., 425 F.3d 211 (3d Cir. 2005). For background on the Lapp factors, see Interpace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983).

The Second Circuit's version came from a certification-mark dispute. Security University advertised classes taught by a "Master CISSP" instructor, which the owner of the CISSP® certification mark argued falsely implied a higher level of certification. The district court granted summary judgment to the school on the theory that only confusion about source mattered and that a certified individual could not infringe a certification mark. The Second Circuit vacated, holding that confusion about sponsorship or affiliation counts, that "nominative fair use is not an affirmative defense," and that district courts must weigh the New Kids factors alongside Polaroid. International Information Systems Security Certification Consortium, Inc. v. Security University, LLC, 823 F.3d 153 (2d Cir. 2016).

The Fifth Circuit treats nominative use as a claim that the use is noninfringing and analyzes it within its confusion factors; it recognized that "one who has lawfully copied another's product can tell the public what he has copied" in a case about a golf course that replicated famous holes, while affirming an injunction against the replica of a famous lighthouse. Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526 (5th Cir. 1998). It rejected nominative use for unlicensed game-day shirts in university colors because designs like "Got eight? We Do!" suggested affiliation with the schools rather than merely referring to them. Board of Supervisors for Louisiana State University v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008). The Sixth Circuit declined to adopt the Ninth Circuit's test and found that putting PETERBILT and KENWORTH in a dealer-locator's domain names went beyond reference. PACCAR Inc. v. TeleScan Technologies, L.L.C., 319 F.3d 243 (6th Cir. 2003). The Fourth Circuit, in the keyword-advertising litigation, applied its ordinary confusion factors to infringement while noting that referential uses do not fit every factor, and it vacated summary judgment on dilution because the district court had collapsed the statutory fair use inquiry into a single question and skipped good faith. Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144 (4th Cir. 2012).

The practical lesson: in the Ninth and Second Circuits, a nominative user who refers accurately and modestly will usually win without carrying a burden of proof. In the Third Circuit, the defendant must be ready to prove fairness even after losing the confusion fight. Everywhere else, the defendant wins by showing that the reference, in context, would not make anyone think the brand owner was involved.

Expressive works and parody before 2023: Rogers and its progeny

The Rogers test

Federico Fellini made a film called Ginger and Fred about two fictional Italian cabaret dancers who had built a career imitating Ginger Rogers and Fred Astaire. Ginger Rogers sued, claiming the title falsely suggested her endorsement. The Second Circuit, in an opinion by Judge Newman, held that the Lanham Act "should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression." For titles, that balance "will normally not support application of the Act unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work." Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). The court's examples of explicitly misleading titles were "Nimmer on Copyright" and "Jane Fonda's Workout Book," or a subtitle claiming "an authorized biography," if false.

The test was a gift to defendants. Artistic relevance, in the Ninth Circuit's later phrase, "merely must be above zero," and "explicitly" misleading means something close to an express false statement about source or endorsement. Under Rogers, most claims against creative works ended on a motion to dismiss.

How far Rogers spread

Over three decades, the test moved from titles to the content of works, to parody, and across most of the circuits:

• Second Circuit. A parody study guide called Spy Notes, with a cover mimicking the yellow-and-black Cliffs Notes design, was protected because "somewhat more risk of confusion is to be tolerated when a trademark holder seeks to enjoin artistic expression such as a parody." Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc., 886 F.2d 490 (2d Cir. 1989). For the "explicitly misleading" prong, the Second Circuit applies the Polaroid factors but requires that a finding of likely confusion be "particularly compelling" to outweigh the First Amendment interest. Twin Peaks Productions, Inc. v. Publications International, Ltd., 996 F.2d 1366 (2d Cir. 1993). The Fifth Circuit adopted that approach for a magazine called POLO. Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658 (5th Cir. 2000).
• Ninth Circuit. The court adopted Rogers for the song "Barbie Girl," ending Judge Kozinski's opinion with the instruction that "the parties are advised to chill." Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002). It then protected a photographer's "Food Chain Barbie" series, which posed Barbie dolls in blenders and other kitchen appliances, applying Rogers to the photo titles and nominative fair use to the depiction of the doll itself, Mattel, Inc. v. Walking Mountain Productions, 353 F.3d 792 (9th Cir. 2003); to a strip club called the "Pig Pen" inside Grand Theft Auto: San Andreas, E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008); to Jim Brown's likeness in Madden NFL, Brown v. Electronic Arts, Inc., 724 F.3d 1235 (9th Cir. 2013); to Fox's television drama Empire and its promotional uses, Twentieth Century Fox Television v. Empire Distribution, Inc., 875 F.3d 1192 (9th Cir. 2017); and to the Seuss-Star Trek mashup Oh, the Places You'll Boldly Go!, Dr. Seuss Enterprises, L.P. v. ComicMix LLC, 983 F.3d 443 (9th Cir. 2020). The one notable crack: greeting cards that simply pasted the viral "Honey Badger Don't Care" catchphrase into a card, with little added expression, created a triable question whether the use was explicitly misleading. Gordon v. Drape Creative, Inc., 909 F.3d 257 (9th Cir. 2018).
• Sixth and Eleventh Circuits. Rosa Parks's own claim against OutKast's song "Rosa Parks" survived summary judgment because a jury could find the title had no artistic relevance to the song, Parks v. LaFace Records, 329 F.3d 437 (6th Cir. 2003), while an artist's painting of Tiger Woods at Augusta was protected, ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003), as were paintings and prints of University of Alabama football scenes showing the team's uniforms, University of Alabama Board of Trustees v. New Life Art, Inc., 683 F.3d 1266 (11th Cir. 2012).
• District courts. A knockoff bag that a character in The Hangover: Part II called a "Lewis Vuitton" was protected expression, and the claim was dismissed on the pleadings. Louis Vuitton Malletier S.A. v. Warner Bros. Entertainment Inc., 868 F. Supp. 2d 172 (S.D.N.Y. 2012).

Courts not using Rogers often reached similar results by other routes. The Seventh Circuit affirmed dismissal of a reverse-confusion claim over fictional "clean slate" software in The Dark Knight Rises because confusion was implausible. Fortres Grand Corp. v. Warner Bros. Entertainment Inc., 763 F.3d 696 (7th Cir. 2014). The Fourth Circuit held that an online article headlined with a mocking rendition of the NAACP's name was not a use "in connection with" goods or services at all, and that the criticism fell within the dilution exclusions. Radiance Foundation, Inc. v. NAACP, 786 F.3d 316 (4th Cir. 2015). As that court put it, trademarks do not give their holders "the rights to stymie criticism."

Parody as a factor, not a defense

For goods that were not traditional expressive works (dog toys, T-shirts, novelty products), courts treated parody as part of the confusion analysis. A parody has to send two messages at once: that it calls the original to mind, and that it is not the original but a joke about it. When the joke lands, confusion is unlikely; when it does not, the parody is just a knockoff with a pun.

The winners make that point. "Chewy Vuiton" plush dog toys were an obvious joke about a luxury brand and caused neither confusion nor dilution. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007). So were a wild boar Muppet named "Spa'am," Hormel Foods Corp. v. Jim Henson Productions, Inc., 73 F.3d 497 (2d Cir. 1996); "Lardashe" jeans for larger women, Jordache Enterprises, Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482 (10th Cir. 1987); a Barney look-alike flattened by the Famous Chicken, Lyons Partnership, L.P. v. Giannoulas, 179 F.3d 384 (5th Cir. 1999); "Timmy Holedigger" pet perfume, Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410 (S.D.N.Y. 2002); and canvas totes printed with a cartoon of a Louis Vuitton bag under the words "My Other Bag," Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 674 F. App'x 16 (2d Cir. 2016). The Seventh Circuit sent a "MIKE" T-shirt parody of Nike to a jury rather than let Nike win on summary judgment. Nike, Inc. v. Just Did It Enterprises, 6 F.3d 1225 (7th Cir. 1993).

The losers make the opposite point. A humor magazine's fake "Michelob Oily" ad lost after a survey showed many readers thought Anheuser-Busch had approved it. Anheuser-Busch, Inc. v. Balducci Publications, 28 F.3d 769 (8th Cir. 1994). "Mutant of Omaha" anti-nuclear T-shirts were enjoined. Mutual of Omaha Insurance Co. v. Novak, 836 F.2d 397 (8th Cir. 1987). So was a pornographic film that dressed its star in the Dallas Cowboys Cheerleaders' uniform. Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir. 1979). A motorcycle repair shop's "parody" of the Harley-Davidson bar-and-shield logo failed because it was used to promote the shop's own competing services. Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806 (2d Cir. 1999). A Houston nightclub called "The Velvet Elvis" lost because its owner conceded he did not need Elvis's name to parody the 1960s lounge scene he was actually targeting. Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998). And a "People Eating Tasty Animals" site at peta.org failed because the domain name itself did not convey the joke; a visitor learned it was a parody only after arriving. People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001).

Noncommercial parody gets the strongest protection. The First Circuit held that Maine's antidilution statute could not constitutionally be used to suppress a magazine's sexual parody of the L.L. Bean catalog. L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir. 1987).

Jack Daniel's v. VIP Products, explained

The toy and the litigation

VIP Products sells a line of squeaky rubber dog toys called Silly Squeakers, most of which parody beverage brands. VIP had registered several of those parody names, such as Dos Perros and Doggie Walker. In 2014 it added "Bad Spaniels," shaped like a Jack Daniel's bottle, with "Old No. 2 on your Tennessee Carpet" in place of "Old No. 7 Brand Tennessee Sour Mash Whiskey" and "43% POO BY VOL." and "100% SMELLY" in place of the alcohol content. A small disclaimer on the back said the product was not affiliated with Jack Daniel Distillery.

Jack Daniel's demanded that VIP stop. VIP sued first for a declaratory judgment of non-infringement and non-dilution (a common move under 28 U.S.C. § 2201; see Declaratory Judgment Actions: Jurisdiction, Discretion, and the Race to the Courthouse), and its complaint alleged that VIP owned the "Bad Spaniels" trademark and trade dress. Jack Daniel's counterclaimed for infringement and dilution by tarnishment. After a 2017 bench trial, the District of Arizona found both and enjoined the toy. The Ninth Circuit reversed, holding that Bad Spaniels was an expressive work entitled to the Rogers test and that its humorous message made it a noncommercial use exempt from dilution liability. VIP Products LLC v. Jack Daniel's Properties, Inc., 953 F.3d 1170 (9th Cir. 2020). On remand the district court entered judgment for VIP, the Ninth Circuit summarily affirmed at the parties' request, and the Supreme Court granted certiorari.

The two holdings

Justice Kagan wrote for a unanimous Court. Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023).

Infringement. Whatever the merits of Rogers (on which the Court took no position), it does not apply "when an alleged infringer uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer's own goods." The Court described Rogers as a "cabined doctrine" that lower courts had confined to uses performing some expressive function other than source identification, and it reasoned that consumer confusion about source, "trademark law's cardinal sin," is most likely when someone uses another's mark as a mark. Using a mark as a source identifier does not become exempt because it also makes a joke. The Court had no difficulty concluding that VIP used Bad Spaniels as a mark: VIP's own complaint said so, its hangtag put the Bad Spaniels logo opposite the concededly trademarked Silly Squeakers logo, and it claimed and registered marks in its other parody toys.

Dilution. The noncommercial-use exclusion in § 1125(c)(3)(C) does not shield parody, criticism, or commentary when the defendant uses the mark as a designation of source for its own goods. The fair use exclusion in § 1125(c)(3)(A)(ii) protects parody only when the use is "other than as a designation of source," and reading the noncommercial exclusion to cover every parody would nullify that limit.

The Court called its opinion "narrow." It did not decide whether Rogers is ever appropriate, or how far the noncommercial exclusion goes. And it emphasized that parody still matters on remand, because "consumers are not so likely to think that the maker of a mocked product is itself doing the mocking."

The concurrences

Justice Sotomayor, joined by Justice Alito, warned that courts should treat surveys "with particular caution" in parody cases, because respondents may wrongly believe that every parody needs the target's permission, and a cleverly designed survey can turn that legal misunderstanding into apparent "confusion." She cited the Michelob Oily case as an example. Justice Gorsuch, joined by Justices Thomas and Barrett, wrote that lower courts should "handle Rogers v. Grimaldi with care," observing that "it is not entirely clear where the Rogers test comes from." Read together, the concurrences tell litigators two things: survey evidence in parody cases will be scrutinized hard, and Rogers itself may not survive a future case that squarely presents it.

After Jack Daniel's: Vans, Punchbowl, Hermès, and the Bad Spaniels remand

The new threshold question

Every expressive-use case now begins where Jack Daniel's ended: did the defendant use the plaintiff's mark, or something like it, as a designation of source for its own goods? Courts answer that with the same evidence they use for the "otherwise than as a mark" element of classic fair use, plus the defendant's own conduct:

• what the defendant said about the term in pleadings, trademark applications, licensing deals, and press releases;
• where the term appears (on the hangtag, the label, the shoebox, the app store listing, the spot where brands normally go);
• whether it carries a ™ or ® symbol or a distinctive logo treatment;
• whether it names a product line, a series, or a business rather than a single work; and
• whether the defendant enforces it against others.

A one-off title of a single book, film, or song is still the easy case for Rogers, because the title of a single creative work does not ordinarily function as a mark. A series title, a brand of merchandise, or the name of a news business is a different matter.

Vans v. MSCHF: art that sold like sneakers

MSCHF, a Brooklyn-based collective known for provocative product drops, released the "Wavy Baby," a distorted, melted-looking version of the Vans Old Skool, in a limited run of 4,306 pairs at $220 each in collaboration with the rapper Tyga. The shoes reproduced a warped version of the Old Skool trade dress, including Vans's registered side-stripe mark. MSCHF called the work commentary on sneaker culture. The Eastern District of New York entered a temporary restraining order and preliminary injunction, and in December 2023 the Second Circuit affirmed. Vans, Inc. v. MSCHF Product Studio, Inc., 88 F.4th 125 (2d Cir. 2023). Applying Jack Daniel's, the court held that MSCHF used Vans's marks and trade dress as source identifiers, so "no special First Amendment protections apply." Under the ordinary Polaroid factors, the products were competitively proximate (Vans sells limited celebrity collaborations at similar prices), and there was evidence of actual confusion, including comments on a sneaker podcast on which MSCHF's chief creative officer appeared. The parody argument failed because a parody must make its contrast with the original clear, and the Wavy Baby was too close to the real thing for its joke to dispel confusion. The court also affirmed an order requiring MSCHF to escrow its Wavy Baby revenues and held that the district court did not have to set a bond under Fed. R. Civ. P. 65 because MSCHF never asked for one.

Punchbowl v. AJ Press: the name of a news business

Punchbowl, Inc. runs an online event-invitation business; AJ Press publishes Punchbowl News, a newsletter about Congress. In 2022 the Ninth Circuit held that Rogers barred Punchbowl's infringement claim. Punchbowl, Inc. v. AJ Press, LLC, 52 F.4th 1091 (9th Cir. 2022). After Jack Daniel's, the panel reversed itself: AJ Press used "Punchbowl" "to identify and distinguish its news products," which is trademark use, so Rogers did not apply and the case went back for an ordinary likelihood-of-confusion analysis. Punchbowl, Inc. v. AJ Press, LLC, 90 F.4th 1022 (9th Cir. 2024). Just as important, the court announced that its earlier precedents were "no longer good law" to the extent they had applied Rogers to expressive marks used as marks. Media companies naming a business, a podcast network, or a newsletter should assume they are in ordinary trademark territory.

Hermès v. Rothschild: NFTs as goods

Mason Rothschild sold "MetaBirkins," non-fungible tokens linked to images of fuzzy, fur-covered Birkin handbags, through a website at metabirkins.com. Judge Rakoff applied Rogers (this was before Jack Daniel's) but let a jury decide whether the use was explicitly misleading, using the Polaroid factors as a guide. Hermès International v. Rothschild, 654 F. Supp. 3d 268 (S.D.N.Y. 2023). In February 2023 an eight-person jury found Rothschild liable for infringement, dilution, and cybersquatting and awarded $133,000. In June 2023, two weeks after Jack Daniel's, the court denied his post-trial motions and entered a permanent injunction, observing that Jack Daniel's now cast doubt on whether Rogers applied at all, since "MetaBirkins" named Rothschild's own product line, and that the court had applied Rogers in a way "highly favorable to the defendant" anyway. The jury had expressly found that Rothschild purposely sought to confuse consumers. Hermès International v. Rothschild, 678 F. Supp. 3d 475 (S.D.N.Y. 2023). Digital-goods practitioners should read the case alongside Trademark Challenges in the Metaverse and Virtual Goods.

The Bad Spaniels remand

On remand from the Supreme Court, the parties agreed that the District of Arizona could decide the remaining issues on the 2017 trial record. In 2025 the court found that Jack Daniel's had not shown a likelihood of confusion, so the infringement claim failed, but it held VIP liable for dilution by tarnishment and entered a permanent injunction. VIP had argued that the tarnishment provision is facially unconstitutional, and the United States intervened to defend the statute; the court declined to reach the challenge because VIP had not raised it in its original pleadings as Fed. R. Civ. P. 8 requires for affirmative defenses. VIP's appeal was pending in the Ninth Circuit when this article was last revised.

Two lessons follow. First, a parody that wins the confusion fight can still lose a dilution claim, because tarnishment does not require confusion. Second, constitutional defenses have to be pleaded early. A party challenging the constitutionality of a federal statute must also file a notice so that the Attorney General can intervene, under Fed. R. Civ. P. 5.1 and 28 U.S.C. § 2403.

What has not changed

Jack Daniel's did not touch classic descriptive fair use or nominative fair use, which by definition involve uses other than as a mark. It did not overrule Rogers for the titles and content of creative works that do not function as source identifiers, and the Ninth Circuit's Punchbowl decision confirms that the test survives there. And it did not make parody irrelevant: the Court itself said that a clear parody reduces the likelihood of confusion. What changed is the order of operations. Defendants who sell parody products under parody brands now have to win on the facts, not on a threshold test.

The dilution exclusions in § 1125(c)(3)

Dilution is a separate claim, and only owners of famous marks can bring it. A mark is famous if it is "widely recognized by the general consuming public of the United States" as a designation of source, which in practice means a household name rather than a brand that is well known in its niche. Dilution comes in two forms: blurring, an association that impairs the distinctiveness of the famous mark, and tarnishment, an association that harms its reputation. Neither requires any confusion at all. 15 U.S.C. § 1125(c). Congress rewrote the statute in the Trademark Dilution Revision Act of 2006 after the Supreme Court read the original version to require proof of actual dilution, Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003); today a likelihood of dilution is enough.

Because dilution reaches uses that fool no one, Congress wrote the speech limits into the statute itself. Section 1125(c)(3) lists three exclusions:

Four working rules come out of the cases.

The defendant carries the burden, and good faith is part of it. Once the owner of a famous mark makes out a prima facie case, the defendant must prove the exclusion. In the keyword litigation, the district court had ruled for Google because Google did not use ROSETTA STONE to identify its own goods. The Fourth Circuit vacated that ruling: the court had "made nontrademark use coextensive with the 'fair use' defense," when the statute also requires the use to be fair, and "a common component of fair use is good faith." Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144 (4th Cir. 2012). The same court explained that the infringement version of fair use under § 1115(b)(4) supplies the contours of the dilution version, so the descriptive and nominative case law discussed above does double duty.

Using the parody as your own brand forfeits the fair use exclusion, but not the parody. "Chewy Vuiton" could not claim the parody exclusion because Haute Diggity Dog used the name as the mark for its own toys. The Fourth Circuit held, though, that the statute does not make a court ignore a parody used as a mark when it decides whether blurring is likely, and it found no likely blurring: a successful parody that pokes fun at a luxury brand tends to reinforce the famous mark's distinctiveness rather than erode it. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007). The Second Circuit applied the same statutory limit to a New Hampshire roaster's "Charbucks Blend" and "Mister Charbucks" coffees: the parody exclusion was unavailable because the roaster used the names to identify its own coffee, and the court found it unnecessary to decide whether to follow the Fourth Circuit on parody's role in the blurring analysis. Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009). Starbucks lost anyway after remand. The marks were only minimally similar in their marketplace context, and a telephone survey in which 30.5 percent of respondents said "Starbucks" when asked what "Charbucks" brought to mind was flawed because it stripped the name from the packaging on which consumers would actually see it. Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 736 F.3d 198 (2d Cir. 2013).

A parody that keeps its own brand separate can use the exclusion. Canvas totes printed with "My Other Bag..." on one side and cartoon drawings of luxury handbags on the other were protected. The court reasoned that the identical "My Other Bag" text was the defendant's brand, that the bags evoked many luxury labels rather than one, and that the joke itself ("my other bag," meaning not this one, is a Louis Vuitton) built "significant distance" between the parodied pattern and the source of the tote. Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 156 F. Supp. 3d 425 (S.D.N.Y. 2016), aff'd, 674 F. App'x 16 (2d Cir. 2016). Put that case next to Jack Daniel's and the lesson is visible on the products themselves: VIP put its parody where a brand goes, on the hangtag opposite its Silly Squeakers logo, while My Other Bag put its own brand there and made the parody the decoration.

"Noncommercial" means noncommercial speech, not "free." The Ninth Circuit held that the song "Barbie Girl" was a noncommercial use even though the record was sold, because the song did more than propose a commercial transaction. Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002). The Fourth Circuit relied on both the criticism branch of the fair use exclusion and the noncommercial exclusion for the NAACP article discussed earlier, noting that a reader who found it through a search for "NAACP" was "highly unlikely to read the article as advertising a Radiance service." Radiance Foundation, Inc. v. NAACP, 786 F.3d 316 (4th Cir. 2015). But Jack Daniel's held that the noncommercial exclusion cannot shield parody, criticism, or commentary that is used as a designation of source, because reading it that broadly would erase the source-identifier limit Congress put in the fair use exclusion. Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023). A song, film, article, or website can still rely on the noncommercial exclusion. A product named after the parody should assume it cannot.

Two further points round out the picture. First, a famous mark that is also an ordinary word does not stop people from using the word. The Ninth Circuit found "eVisa" likely to blur the VISA mark but stressed that the defendant "is not using the word visa for its literal dictionary definition, and this would be a different case if it were"; Visa could not stop a travel agency called "Orr's Visa Services." Visa International Service Ass'n v. JSL Corp., 610 F.3d 1088 (9th Cir. 2010). Second, tarnishment is where parody defendants are most exposed, because a joke that confuses no one can still link a famous brand with something unsavory. Courts treat a sexually explicit setting, like the one in the Dallas Cowboys Cheerleaders film case, as classic tarnishment, and they reject tarnishment where the joke is gentle, as in the Spa'am Muppet case. For the full framework (fame, the six blurring factors, and how tarnishment is proved), see Trademark Dilution Under the TDRA: Blurring, Tarnishment, and What It Means to Be Famous.

The First Amendment backdrop, and what the TTAB does with parody

Commercial speech and why trademark injunctions are not prior restraints

Most uses of a trademark in advertising are commercial speech, which the Constitution protects less than other speech and does not protect at all when it is false or misleading. Central Hudson Gas & Electric Corp. v. Public Service Commission, 447 U.S. 557 (1980). The Supreme Court's test for whether mixed speech is commercial looks at whether it is an advertisement, whether it refers to a specific product, and whether the speaker has an economic motive. Bolger v. Youngs Drug Products Corp., 463 U.S. 60 (1983). Because trademark infringement is by definition likely to mislead, courts have long held that an injunction against infringing speech is not an unconstitutional prior restraint. Dallas Cowboys Cheerleaders, 604 F.2d 200. The Second Circuit applied that rule to MSCHF's sneakers, rejecting the prior-restraint argument as a repackaged version of its losing First Amendment argument on the merits. Vans, 88 F.4th 125. Congress can even protect a word against non-confusing commercial uses: the Supreme Court upheld the Olympic Committee's statutory control of "Olympic" against a group promoting the "Gay Olympic Games," reasoning that the restriction reached only commercial and promotional uses. San Francisco Arts & Athletics, Inc. v. United States Olympic Committee, 483 U.S. 522 (1987).

Noncommercial parody sits at the other end. The Supreme Court held that a public figure could not recover for emotional distress caused by a magazine's crude ad parody that "could not reasonably be understood as describing actual facts." Hustler Magazine, Inc. v. Falwell, 485 U.S. 46 (1988). Judge Leval applied the same instinct to a magazine cover that parodied the Old Farmer's Almanac, observing that "the obscurity of its joke does not deprive it of First Amendment support." Yankee Publishing Inc. v. News America Publishing Inc., 809 F. Supp. 267 (S.D.N.Y. 1992).

Borrowing from copyright: target, not just topic

Trademark courts often borrow the copyright distinction between parody, which comments on the original, and satire, which uses the original to comment on something else. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994). The Ninth Circuit used it to reject a fair use defense for a book about the O.J. Simpson trial written in the style of The Cat in the Hat, because the book did not comment on Dr. Seuss's work. Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir. 1997). The Fifth Circuit's Velvet Elvis decision makes the same move in trademark terms: a joke about 1960s lounge culture did not need Elvis's name. Three weeks before Jack Daniel's, the Supreme Court narrowed copyright's "transformative use" factor in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508 (2023), holding that licensing an artist's portrait to a magazine shared the commercial purpose of the photograph it was based on. Read together, the two 2023 decisions send one message: an expressive gloss does not excuse a use that does the same commercial job as the original. Our Copyright Fair Use Checklist: A Practical Checklist applies the Warhol test.

The registration cases: Tam, Brunetti, and Elster

Three recent Supreme Court decisions about registration shape how litigants argue about speech, even though none is an infringement case. In Matal v. Tam, 582 U.S. 218 (2017), affirming the en banc Federal Circuit in In re Tam, 808 F.3d 1321 (Fed. Cir. 2015), the Court held that trademarks are private speech, not government speech, and struck down the ban on registering disparaging marks as viewpoint discrimination. Iancu v. Brunetti, 588 U.S. 388 (2019) did the same to the ban on "immoral or scandalous" marks. Then Vidal v. Elster, 602 U.S. 286 (2024) upheld the bar on registering a living person's name without consent in 15 U.S.C. § 1052(c), rejecting the applicant's bid to register TRUMP TOO SMALL for shirts; the restriction is content based but viewpoint neutral and fits a long tradition of limits on trademarks that use names. The practical effect for fair use litigation is that viewpoint arguments now carry real weight. VIP's challenge to the tarnishment provision, discussed above, was built on Tam and Brunetti. The disparagement story is told in The Washington Redskins Trademark Troubles: Disparagement, Matal v. Tam, and the Aftermath.

What the TTAB does with parody and description

The Trademark Trial and Appeal Board decides only whether a mark may be registered; it cannot find infringement, award damages, or enjoin anyone. Two consequences follow. First, an applicant cannot defend an opposition by calling its mark a parody or a fair use, because it is asking the Office to register the term as its own source identifier, which is exactly the use Jack Daniel's says gets no special treatment. The Board rejected a parody defense 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 sustained the Yankees' dilution-based oppositions to THE HOUSE THAT JUICE BUILT over a parody argument, New York Yankees Partnership v. IET Products & Services, Inc., 114 U.S.P.Q.2d 1497 (T.T.A.B. 2015). Oppositions must be filed within thirty days after publication, extendable by request, under 15 U.S.C. § 1063 and 37 C.F.R. § 2.102.

Second, the Office protects descriptive language at the front end. Examiners refuse merely descriptive marks and require applicants to disclaim descriptive components under 15 U.S.C. § 1056, and they refuse slogans and widely used messages that consumers would read as information rather than as a brand (TMEP §§ 1202.04 and 1213). Those file histories become evidence later: Gatorade's disclaimer of "The Sports Fuel Company" helped it win SportFuel, and a defendant that has itself claimed the disputed phrase as a mark will have a hard time calling it description. A Board decision on likelihood of confusion can also bind the parties in later litigation when the marks and uses are materially the same. B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138 (2015). For Board procedure, see the TTAB Practice Toolkit: Oppositions, Cancellations, and the Trademark Trial and Appeal Board from Pleading to Appeal.

Fair use online: keywords, metatags, domain names, and gripe sites

The internet did not create new fair use doctrines; it created new places to apply the old ones. Four settings come up constantly.

Keyword advertising. Buying a competitor's mark as a search keyword is a "use in commerce" that can support an infringement claim. Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009) (distinguishing 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005), where pop-up ads keyed to a directory of web addresses were not a use). But liability turns on whether the resulting ad confuses, and courts look hardest at how the ad is labeled. The Ninth Circuit vacated an injunction against a software company that bid on a rival's mark, holding that the confusion factors must be applied flexibly and that the labeling and appearance of the ads, the degree of care of the buyers, and actual confusion matter most. Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011). It later affirmed summary judgment for Amazon, which showed competing watches when shoppers searched for a brand it did not carry, because the results page "clearly labels the name and manufacturer of each product." Multi Time Machine, Inc. v. Amazon.com, Inc., 804 F.3d 930 (9th Cir. 2015). The fair use point is about the ad text: "Looking for a Kestrel alternative?" refers to the competitor nominatively; "Kestrel Official Site" over someone else's link does not.

Metatags and page text. Using a mark in hidden page code is judged the way visible use is. The Playmate in Welles could put "Playboy Playmate of the Year" in her metatags because it described her. The video chain in Brookfield could not use its rival's coined mark "MovieBuff" in its metatags, but the Ninth Circuit drew the line with a single space: "Movie Buff" is ordinary English for a film enthusiast, and the chain could use it. Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999).

Domain names. A domain name that contains a mark is not automatically infringing, but it sits closer to the brand-name end of the spectrum than ad copy does. The Lexus broker in Tabari could use domains like buyorleaselexus.com because the full name described its service; the dealer locator in PACCAR could not use peterbilttrucks.com-style names that read like the brand owner's own sites. A reseller of genuine secondhand Beanie Babies could call her business bargainbeanies.com, because, as Judge Posner wrote, producers do not "own their aftermarkets." Ty Inc. v. Perryman, 306 F.3d 509 (7th Cir. 2002). The cybersquatting statute builds fair use into its bad-faith test: one listed factor is "the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name." 15 U.S.C. § 1125(d). The UDRP has a parallel safe harbor for "legitimate noncommercial or fair use" (UDRP Policy ¶ 4(c)(iii)), and the WIPO Jurisprudential Overview 3.0 collects the panel consensus on resellers (§ 2.8, the Oki Data test) and criticism sites (§ 2.6). For forum choices, see Domain Name Disputes: Cybersquatting, the ACPA, and the UDRP and Beyond the UDRP: Uniform Rapid Suspension, Country-Code Domain Disputes, In Rem ACPA Actions, and Reverse Domain Name Hijacking.

Gripe and parody sites. Courts have repeatedly refused to let trademark law silence critics. A site at fallwell.com criticizing the Reverend Jerry Falwell's views was not likely to confuse anyone once a visitor saw its content. Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005). The Sixth Circuit dissolved injunctions against a fan site and a set of "sucks" complaint sites aimed at a mall developer. Taubman Co. v. Webfeats, 319 F.3d 770 (6th Cir. 2003). A dissatisfied patient's critical site at a domain built from the clinic's name was not a use "in connection with the sale of goods or services." Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005). And the Ninth Circuit held that an order barring a domain holder from linking to negative commentary about Nissan was a content-based restriction on noncommercial speech. Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th Cir. 2004). The contrast case is PETA v. Doughney: a parody that a visitor discovers only after the domain name has already drawn them in gets less protection than a site whose name announces the joke or the complaint. See also Utah Lighthouse Ministry v. Foundation for Apologetic Information & Research, 527 F.3d 1045 (10th Cir. 2008) (affirming summary judgment for the creator of a parody of a ministry's website because the parody was not used in connection with any goods or services).

The marketplace and contributory-liability side of online enforcement, including how platforms respond to notices, is covered in Enforcing Trademarks Against Online Sellers and Platforms: A Practical Guide.

Procedure, timing, and cost

Pleading the defense

Descriptive fair use is an affirmative defense, an issue on which the defendant bears the burden of proof and which must be raised in the answer. Fed. R. Civ. P. 8(c); KP Permanent, 543 U.S. 111. Defendants should plead every theory that could apply (descriptive fair use, nominative fair use, the dilution exclusions, Rogers where the use is not source-identifying, First Amendment defenses, and failure to use the mark "in connection with" goods or services), and should allege facts rather than labels. A defense omitted from the answer can be lost, as VIP learned when the District of Arizona refused to hear its constitutional challenge to the tarnishment provision. If the case develops, amend under Fed. R. Civ. P. 15 promptly rather than waiting for summary judgment. For drafting the answer itself, see Answering a Federal Complaint: Denials, Affirmative Defenses, Counterclaims, and Judgment on the Pleadings.

Early dismissal

A complaint must state a plausible claim. Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007); Ashcroft v. Iqbal, 556 U.S. 662 (2009). An affirmative defense can support dismissal under Fed. R. Civ. P. 12(b)(6) only when it is clear from the complaint and the documents it relies on. The Sixth Circuit affirmed such a dismissal in Hensley because the ads attached to the complaint showed descriptive use of Jim Hensley's name and the complaint alleged no facts suggesting bad faith. The Second Circuit reversed one in Kelly-Brown because the complaint plausibly alleged that "Own Your Power" was being built into a brand. And the Ninth Circuit reversed a dismissal in a dispute between Trader Joe's and a union selling merchandise with a similar logo, holding (among other things) that the district court could not dismiss the dilution claim on nominative fair use grounds that the union had never raised, without giving Trader Joe's a chance to respond or applying the three-factor test. Trader Joe's Co. v. Trader Joe's United, 150 F.4th 1040 (9th Cir. 2025). Courts may consider the accused ad or product itself when the complaint relies on it, and may take judicial notice of public records such as registrations under Fed. R. Evid. 201.

Before 2023, Rogers cases were the most common early wins; courts dismissed claims against the Hangover film and granted summary judgment for the maker of Call of Duty over its depiction of Humvees, AM General LLC v. Activision Blizzard, Inc., 450 F. Supp. 3d 467 (S.D.N.Y. 2020). After Jack Daniel's, the threshold question (is the use source-identifying?) is often factual, so early dismissal is realistic mainly when the accused use is the title or content of a single expressive work, or when the referential nature of the use is obvious from the face of the complaint.

Discovery

Fair use cases are won on documents about how and why the term was chosen and used. Plaintiffs should ask under Fed. R. Civ. P. 26 and Fed. R. Civ. P. 34 for naming briefs, design drafts, brand guidelines, trademark searches, internal chats about the plaintiff, and every version of the accused materials; take a corporate deposition under Fed. R. Civ. P. 30(b)(6) on adoption and use; and serve requests for admission under Fed. R. Civ. P. 36 on the facts that decide source-identifying use (that the defendant applied to register the term, put a ™ on it, or named a product line with it). Defendants should collect evidence of descriptive meaning (dictionaries, industry usage, third-party uses, the plaintiff's own descriptive uses) and evidence of the absence of confusion. A defendant that intends to rely on an opinion of counsel to show good faith should decide early, because relying on the advice usually waives privilege over it; see The Shield of Good Faith: How Trademark Clearance Searches, Attorney Opinions, and USPTO Approval Protect Against Willful Infringement Claims.

Summary judgment

Fair use is decided on summary judgment more often than likelihood of confusion is, because the questions (was the term used as a mark, does it describe, was the defendant acting in good faith) can often be answered from the accused materials and the adoption record. Fed. R. Civ. P. 56; Celotex Corp. v. Catrett, 477 U.S. 317 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986). Cosmetically Sealed, Car-Freshner, Packman, SportFuel, Sorensen, International Stamp Art, and Dessert Beauty were all summary judgment wins for defendants. But appellate courts reverse when the record is genuinely mixed. The Second Circuit vacated a $21 million judgment against Costco, which had used "Tiffany" on point-of-sale signs for rings with a pronged "Tiffany setting," holding that a jury could find the use descriptive and in good faith. Tiffany & Co. v. Costco Wholesale Corp., 971 F.3d 74 (2d Cir. 2020). Fortune Dynamic, Marketquest, and EMI were reversed for similar reasons. The guide to Second Circuit practice is Polaroid Factors on Summary Judgment in the Second Circuit: A Practical Guide.

Preliminary injunctions

A brand owner seeking a preliminary injunction must show likely success, irreparable harm, a favorable balance of hardships, and the public interest. Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008); see eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006). Since the Trademark Modernization Act of 2020, a plaintiff that shows likely success on the merits gets a rebuttable presumption of irreparable harm. 15 U.S.C. § 1116(a). 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), a defendant relying on descriptive fair use must be ready to show that it is likely to prove the defense, not merely that the plaintiff has not disproved it. Vans shows the other tools on the table: a TRO and preliminary injunction less than two weeks after the complaint, an escrow of revenues, and a security bond under Fed. R. Civ. P. 65(c) that the enjoined party must actually request. Orders granting or denying injunctions are immediately appealable under 28 U.S.C. § 1292(a)(1). See Preliminary Injunctions and Temporary Restraining Orders: Emergency Relief in Federal Court.

Trial, remedies, and fees

Likelihood of confusion and the elements of fair use are questions of fact, and either side may demand a jury under Fed. R. Civ. P. 38 when legal remedies are sought; the Supreme Court has treated trademark questions that turn on ordinary consumers' impressions as jury questions. Hana Financial, Inc. v. Hana Bank, 574 U.S. 418 (2015). Monetary relief under 15 U.S.C. § 1117(a) includes the defendant's profits, the plaintiff's damages, and costs. Willfulness is not a prerequisite to a profits award but remains "a highly important consideration," Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 212 (2020), so the good-faith evidence that supports fair use also limits exposure. The profits that count are the named defendant's own, not those of its unnamed affiliates. Dewberry Group, Inc. v. Dewberry Engineers Inc., 604 U.S. 321 (2025). Attorney's fees are available "in exceptional cases," and most circuits now apply the flexible standard of Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014). That cuts both ways: a brand owner that sues a plainly referential or descriptive use can end up paying the defendant's fees. See Lanham Act Attorney's Fees Under 15 U.S.C. § 1117(a): A Practical Guide.

What it costs and how long it takes

Costs vary enormously with the stakes, but the order of magnitude is predictable. A cease-and-desist exchange that ends with a reworded ad costs a few thousand dollars on each side. A case resolved on a motion to dismiss usually costs tens of thousands. A case taken through discovery and summary judgment, with one survey per side, commonly reaches the mid six figures for each party, and a jury trial in a significant case can cost seven figures. Consumer surveys and the experts who testify about them are a large share of that budget. Timelines run from a few weeks (TRO and preliminary injunction practice in a product-launch case like Vans) to a decade (the Bad Spaniels litigation began in 2014). These are reasons, not merely for defendants, to resolve fair use questions before launch, and for brand owners to pick fights the doctrines will let them win.

Evidence that decides fair use cases

Fair use disputes are unusually document-driven. The accused materials and the story of how they were made usually decide the case before any expert says a word.

Three cautions about the evidence that lawyers most often get wrong.

Surveys in parody and nominative cases. A standard confusion survey asks respondents who they think makes or sponsors a product. In a parody case that question can capture a legal mistake (the belief that a joke needs permission) rather than marketplace confusion, which is the point of Justice Sotomayor's concurrence. In a nominative case, a survey that shows a product page and asks whether the brand owner "approved" the listing invites the same problem, because respondents may assume any use of a brand name requires approval. Survey evidence must also satisfy Fed. R. Evid. 702, amended in 2023 to emphasize that the proponent must show admissibility by a preponderance, and the gatekeeping framework of Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993) and Kumho Tire Co. v. Carmichael, 526 U.S. 137 (1999). McCarthy chapter 32 is the standard reference on survey formats. See Consumer Survey Expert Methodology in Trademark Cases: A Practical Guide, Daubert Challenges to Consumer Survey Experts in Trademark Litigation: A Practical Guide, and, for deposing the other side's survey expert, Expert Depositions: Taking Apart the Opinion, Protecting Your Own Expert, and Building the Daubert Record.

Registration is evidence, not a trump card. A registration certificate is prima facie evidence of validity and ownership under 15 U.S.C. § 1057(b), and an incontestable one cannot be attacked as merely descriptive, but neither status defeats a fair use defense. KP Permanent, Fortune Dynamic, and Dessert Beauty all involved incontestable registrations, and the defendants won or reached a jury anyway.

The defendant's paperwork can be the plaintiff's best exhibit. VIP lost the threshold question in the Supreme Court largely because of what it had said and done: it alleged that it owned the Bad Spaniels "trademark," used a hangtag that paired the Bad Spaniels logo with its concededly trademarked Silly Squeakers logo, and registered other parody names. Defense counsel should read every application, specimen, and pleading the client has filed before asserting that a term is "just a joke" or "just a description."

Strategy for each side

For brand owners

1. Classify the use before sending anything. Ask whether the accused party is (a) using the term as its own brand, (b) describing its own goods, (c) referring to your goods, or (d) commenting on you or making art. Only category (a) is an ordinary infringement case. Categories (b) through (d) require facts that defeat the defense: branding-style presentation, bad faith, implied endorsement, or a parody that is really a knockoff.
2. After Jack Daniel's, build the source-identifier record first. Collect the ™ symbols, the trademark applications, the product-line names, the social handles, the hangtags and labels. If the defendant uses your mark (or a play on it) as a brand, Rogers is off the table and the parody becomes one factor among many.
3. Choose claims that fit. Dilution requires real fame and, after Rosetta Stone, puts the burden of the exclusions on the defendant. A misleading comparison is a false advertising claim under § 1125(a)(1)(B), which requires a commercial injury proximately caused by the deception. Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014). A false endorsement claim fits uses that imply your approval.
4. Ask for the remedy the law will give. Courts tailor relief in referential cases. The Ninth Circuit vacated an injunction that would have banned every domain name containing "Lexus" (Tabari), the First Circuit vacated an order dictating the font size of "Swarovski" (Swarovski), and the Seventh Circuit limited an injunction to the reseller's misuse of "Beanies" for non-Ty goods (Ty). A demand for "independent," a disclaimer, removal of the logo, and a smaller typeface often achieves what matters at a fraction of the cost.
5. Mind the forum. The Third Circuit makes the defendant prove fairness even after the plaintiff shows confusion; the Ninth puts the burden on the plaintiff once the use is referential. A strong demand letter may provoke a declaratory judgment action in the recipient's chosen court, as VIP's did. See Drafting a Trademark Cease-and-Desist Letter.
6. Count the reputational cost. A suit against a parodist, a critic, or a small repair shop generates exactly the publicity the brand owner wanted to avoid, and an unsuccessful one can produce a fee award. Sometimes the right response to a clever parody is a clever reply.

For accused users

1. Clear the use before launch. Write down why the term is descriptive or referential, what alternatives existed, and how the presentation avoids implying a connection. Use plain words rather than logos or stylized lettering, put your own brand in the most prominent position, and keep the ™ symbol off the borrowed term.
2. Never claim the borrowed term as your mark. Do not apply to register it, do not call it your trademark in a complaint or a press release, and do not build a product line around it unless you are prepared to litigate an ordinary confusion case.
3. If it is parody, make the joke unmistakable. Target the brand itself, make the differences larger than the similarities, avoid copying the trade dress more than the joke requires, and keep your own brand separate from the parodied mark (My Other Bag). A parody of a competitor's product sold in the same aisle is the hardest case to win (Vans).
4. If it is a comparison, make it true and provable. Substantiate every factual claim before publication, name the competitor in plain text, and say clearly that the two companies are not affiliated. The FTC encourages truthful comparative advertising (16 C.F.R. § 14.15) but treats unsubstantiated claims as deceptive.
5. When the letter arrives, preserve documents, assess whether a declaratory judgment action makes sense, and answer without conceding trademark use. See Responding to a Trademark Cease-and-Desist Letter.
6. In litigation, plead every defense, push for early summary judgment on the documents, attack confusion surveys that test legal assumptions, and in the Ninth Circuit insist that the New Kids test replaces the ordinary factors. Delay by the brand owner can also matter; see Understanding Equitable Defenses: A Comprehensive Guide to Laches, Acquiescence, Waiver, and Equitable Estoppel.

The step-by-step version of both playbooks, with timelines and filing mechanics, is in our Asserting or Defeating a Trademark Fair Use Defense: A Practical Guide.

Common mistakes

Brand owners

• Treating every appearance of the mark as infringement. KP Permanent and New Kids exist precisely to protect description and reference, and a demand that a repair shop stop saying what it repairs is a fee motion waiting to happen.
• Assuming an incontestable registration defeats fair use. It does not; § 1115(b)(4) is written into the incontestability section itself.
• Running a survey that measures legal beliefs ("Do you think the company needed permission?") instead of marketplace confusion.
• Pleading dilution without evidence of household-name fame, or without a plan to meet the defendant's exclusion arguments.
• Waiting months after learning of a product launch and then seeking emergency relief. Delay undercuts irreparable harm despite the statutory presumption.

Accused users

• Calling the parody or the descriptor "our trademark" in a complaint, an application, a hangtag, or a press release. That is the fact that sank VIP.
• Using the logo or the stylized lettering when the plain words would do (Welles, Tabari).
• Shrinking your own brand so the borrowed term carries the package.
• Treating a small-print disclaimer as a cure for a use that otherwise looks like branding.
• Arguing the copyright fair use factors in a trademark case. Transformative use is not a trademark defense.
• Leaving defenses out of the answer (VIP's constitutional challenge) or comparative claims unsubstantiated.

Worked examples

1. The independent repair shop

Marisol Rivera runs Rivera Cycle Works in Tucson and services Kestrel e-bikes, a well-known (fictional) brand with an authorized dealer network. Her storefront sign reads "KESTREL SERVICE" in Kestrel's teal typeface beside Kestrel's falcon logo, her site is at kestrelrepairtucson.com, and her search ads say "Kestrel Repair Tucson." Kestrel's counsel demands that she stop using the word "Kestrel" entirely.

She is entitled to tell the public what she repairs. That right goes back to Champion, and the independent mechanic in Volkswagenwerk v. Church and the vacuum shop in Scott Fetzer both kept it. Arizona is in the Ninth Circuit, so the New Kids test replaces the ordinary confusion factors, and once she shows she is referring to Kestrel's bikes the burden returns to Kestrel (Tabari). Her exposure is in the details. The falcon logo and teal typeface are more of the mark than she needs to identify the bikes (Welles, Tabari), and "KESTREL SERVICE" with nothing more reads like an authorized service center, which is the implied-sponsorship problem the third New Kids factor polices. The domain name is closer: Tabari allowed domains that describe a referential service, but a plain "kestrelrepair" address with no qualifier invites an argument that visitors expect an official site.

The fix. She replaces the sign with "Independent repair for Kestrel e-bikes" in her own lettering and logo, adds a line on the site and in the ads ("Rivera Cycle Works is not affiliated with Kestrel"), and either moves the site to a domain built on her own name or adds "independent" prominently to the page header. Her response letter offers those changes and declines to stop naming the brand, citing Church, Scott Fetzer, and Tabari. If Kestrel sues anyway, the most it is likely to get is an order covering the logo and typeface, and it risks a fee award under the Octane Fitness standard for pressing the rest.

2. The craft brewery parody

Hollow Oak Brewing, a regional brewery selling in four states, releases a double IPA called "Glacier Freak" in a can that copies the blue-mountain label of Glacier Peak Light, a famous (fictional) national light lager, replacing the snowy peak with a cross-eyed yeti. The can puts a ™ next to "Glacier Freak," and Hollow Oak has applied to register the name. It obtained label approval from the Alcohol and Tobacco Tax and Trade Bureau under 27 C.F.R. Part 7, and its founder points to that approval as proof the label is lawful.

It is not proof of anything in a trademark case; label approval addresses federal alcohol labeling rules, not third-party trademark rights. On the merits, this is Jack Daniel's with higher stakes. "Glacier Freak" is the beer's brand: it is on the front of the can, it carries a ™, and Hollow Oak has applied to register it. So Rogers does not apply, and the parody matters only as part of the confusion analysis. That analysis is unfriendly. Beer is sold next to beer, in the same coolers, to the same buyers, which is the competitive proximity that sank MSCHF in Vans, and the closer the can tracks Glacier Peak's trade dress, the less the yeti will dispel confusion. On dilution, the parody exclusion is unavailable because the parody is the product's name (Haute Diggity Dog, Starbucks), although a court in the Fourth Circuit would still consider the joke in deciding whether blurring is likely. The exposure includes an injunction, Hollow Oak's profits on the beer (Romag makes intent important but not required), and the cost of pulling inventory.

The fix. Hollow Oak's choices are to (a) rename the beer so the name does not track the famous mark, (b) keep the joke but redesign the can around Hollow Oak's own trade dress, with the brewery's name dominant and only a passing visual nod to the target, (c) limit the release to a festival or taproom run and accept a measured risk, or (d) ask Glacier Peak for consent. It should withdraw the trademark application in any event; the application is evidence of source-identifying use and buys nothing a festival beer needs. The defensible version of the joke looks like My Other Bag: the brewery's brand on the can and the parody as decoration that comments on the target, not a substitute label.

3. The SaaS comparison chart

LedgerLoop, a bookkeeping startup, launches a landing page titled "The Quillbooks alternative that doesn't charge per user." It includes a feature table with Quillbooks' logo in the column header, a claim that LedgerLoop delivers "50% faster bank reconciliation than Quillbooks," and search ads bidding on "Quillbooks" with the headline "Quillbooks Alternative | LedgerLoop." Quillbooks, the market leader, sends a letter alleging infringement, dilution, and false advertising.

The comparison itself is protected. Naming a competitor to compare against it is the paradigm nominative use (Smith v. Chanel, Century 21), the FTC encourages truthful comparisons (16 C.F.R. § 14.15), and the dilution statute expressly excludes "advertising or promotion that permits consumers to compare goods or services," assuming Quillbooks could even prove household-name fame. The keyword purchase is a use in commerce (Rescuecom), but an ad headed "Quillbooks Alternative" announces a different source, which is the labeling that mattered in Network Automation and Multi Time Machine. The logo is the weak point: it is more than LedgerLoop needs, and the plain word does the job.

The real exposure is the speed claim. If "50% faster" is literally false or unsupported, nominative fair use is no defense, and Quillbooks, as a direct competitor, has standing under Lexmark to sue under § 1125(a)(1)(B); the FTC can also act against unsubstantiated claims under 15 U.S.C. § 45. LedgerLoop needs a written test protocol, the versions and dates tested, the data, and a description of the test conditions near the claim. If its engineers ran the benchmark on a Quillbooks trial account, LedgerLoop should also check Quillbooks' terms of service, which may restrict benchmarking as a matter of contract regardless of trademark law.

The fix. Replace the logo with the word "Quillbooks," add "LedgerLoop is not affiliated with Quillbooks," keep the ad headline, and either substantiate the speed claim or restate it narrowly ("in our March 2026 test of 10,000 transactions, reconciliation took 41% less time"). The response letter should concede the logo, defend the comparison and the keyword, and offer the substantiation. For the substantiation file itself, see False Advertising Toolkit: Substantiation Files, Surveys, and Injunction Briefing, and for clearing this kind of page before launch, the Trademark Fair Use Toolkit: Nominative Use Guidelines, Comparative Advertising Clearance, and Defense Briefing.

Frequently asked questions

Can I mention a competitor's brand in my advertising? Yes, if what you say is true and nothing suggests the competitor sponsors or approves your product. Use the name in plain text rather than the logo, keep your own brand more prominent, and substantiate every factual comparison before you publish it.

Does a disclaimer make my use fair? It helps a referential use and was credited in Tabari, but it cannot convert a use as a brand into a fair use; VIP's hangtag carried a disclaimer. Put any disclaimer next to the use, in legible type, and in language people understand ("not affiliated with").

Is parody a defense to trademark infringement? Not a freestanding one. Parody is a factor in the confusion analysis, and a clear parody makes confusion less likely. Rogers still protects the titles and content of expressive works that do not use the mark as a brand, and the dilution statute excludes parody only when it is not used as a designation of source.

Did Jack Daniel's overrule Rogers v. Grimaldi? No. It held that Rogers does not apply when the accused use is a designation of source for the defendant's own goods, and it took no position on Rogers otherwise. Courts still apply Rogers to titles and content of single creative works, although three Justices signaled doubts about where the test comes from.

Can I say my product is "compatible with" or "for use with" a branded product? Generally yes, if the statement is true and you use only the brand name needed to make it. Truthful compatibility statements are classic nominative uses. A false compatibility claim is false advertising, and a prominent, logo-heavy presentation can imply a partnership that does not exist.

A competitor registered a descriptive word. Can I still use that word? You can use it in its ordinary sense to describe your own product, "otherwise than as a mark," fairly and in good faith, even if the registration is incontestable. You cannot safely make it your own product name; at that point the dispute is about confusion and the validity of the registration, not fair use.

Who has the burden of proof? The plaintiff always proves likely confusion. The defendant proves the elements of descriptive fair use (KP Permanent) and the dilution exclusions (Rosetta Stone). For nominative use it depends on the circuit: the plaintiff in the Ninth (Tabari), the defendant on fairness in the Third (Century 21), and a combined factor analysis in the Second (Security University).

Is trademark fair use the same as copyright fair use? No. Copyright fair use under 17 U.S.C. § 107 weighs four factors and asks about transformative purpose. Trademark fair use asks whether the defendant used the term as a brand, whether it describes or refers, and whether anything implies sponsorship.

Can I register a parody as a trademark? You can apply, but the Board does not treat parody as a defense to likely confusion or dilution, and the application itself is evidence that you are using the parody as a brand, which takes Rogers off the table in any later lawsuit.

Can a fair use defense 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). It is more common at summary judgment, and since Jack Daniel's the threshold question of source-identifying use is often factual.

Practical takeaways

• The first question is always whether the defendant used the term as a mark. It decides whether Rogers applies, whether the dilution exclusions apply, and whether descriptive fair use is available.
• Description and reference are protected, not unlimited. Use plain words, only as much of the mark as needed, with your own brand dominant and no hint of endorsement.
• Parody helps on confusion, not on threshold. After Jack Daniel's, a parody brand gets an ordinary confusion analysis in which the joke is one factor.
• Know the circuit. Burdens and tests for nominative use differ, and the difference often decides summary judgment.
• Documents win these cases. Adoption records, file histories, and every version of the accused use matter more than expert opinions.
• Surveys in parody and nominative cases need special care to measure marketplace confusion rather than beliefs about the law.
• Comparative advertising is lawful if true. The bigger risk in a comparison is false advertising, not trademark infringement.
• Plead every defense early, and never describe a borrowed term as your trademark unless you are ready to defend it as one.
• Brand owners should demand the cure, not silence. Courts tailor injunctions in referential cases and award fees in exceptional ones.

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

Related Documents

Related Articles

• Trademark Dilution Under the TDRA: Blurring, Tarnishment, and What It Means to Be Famous: fame, the blurring factors, and tarnishment in depth.
• Genericness, Genericide, and Acquired Distinctiveness: Where Trademark Protection Begins and Ends: the distinctiveness spectrum that descriptive fair use works alongside.
• Trademark Liability Online: Keyword Advertising, Marketplaces, and Contributory Infringement After Tiffany v. eBay: keyword ads, marketplaces, and secondary liability.
• The Right of Publicity and the First Amendment: Transformative Use, Newsworthiness, and the Limits of Owning a Persona: the persona-rights counterpart to expressive use of marks.
• False Advertising Under the Lanham Act: Literal Falsity, Materiality, and Competitor Standing: the falsity side of comparative advertising.
• Copyright Fair Use: The Four Factors, Transformative Use, and What Warhol Changed: the copyright doctrine that shares a name and little else.
• The Washington Redskins Trademark Troubles: Disparagement, Matal v. Tam, and the Aftermath: the First Amendment and registration.
• Trademark Challenges in the Metaverse and Virtual Goods: Brand Protection Strategies for Digital-First Commerce: MetaBirkins and digital goods.
• Answering a Federal Complaint: Denials, Affirmative Defenses, Counterclaims, and Judgment on the Pleadings: pleading fair use and preserving constitutional defenses.
• Gray Market Goods and the First Sale Doctrine: Parallel Imports, Material Differences, and Exhaustion: the limits of the resale right.

Related Guides

• Asserting or Defeating a Trademark Fair Use Defense: A Practical Guide: the step-by-step litigation companion to this article.
• Bringing or Defending a False Advertising Claim: A Practical Guide: when a comparison is challenged as false.
• Consumer Survey Expert Methodology in Trademark Cases: A Practical Guide: survey formats, universes, and controls.
• Enforcing Trademarks Against Online Sellers and Platforms: A Practical Guide: resale, marketplaces, and takedowns.
• Clearing Expressive Works Against Right of Publicity Claims: A Practical Guide: clearance for films, games, and art.

Related Checklists

• Trademark Fair Use Analysis Checklist: A Practical Checklist: the analysis in this article as a working checklist.
• Trademark Likelihood-of-Confusion Analysis: A Practical Checklist: the factor tests that still govern after Jack Daniel's.
• Responding to a Trademark Cease-and-Desist Letter Checklist: A Practical Checklist: the first week after the letter arrives.
• False Advertising Claim Checklist: A Practical Checklist: evaluating a comparative claim.
• Trademark Clearance Search Checklist: A Practical Checklist: clearing a name before it becomes a brand.

Related Toolkits

• Trademark Fair Use Toolkit: Nominative Use Guidelines, Comparative Advertising Clearance, and Defense Briefing: guidelines, clearance forms, and briefing outlines.
• False Advertising Toolkit: Substantiation Files, Surveys, and Injunction Briefing: substantiation for comparative claims.
• Trademark Enforcement and Litigation Toolkit: From Watching to Verdict and Appeal: templates across the life of a trademark case.
• Advertising and Consumer Protection Compliance Toolkit: FTC-facing review of advertising claims.