Trademark Fair Use Analysis Checklist: A Practical Checklist

Summary. This checklist turns trademark fair use doctrine into a sequence of concrete tasks for brand owners, accused users, marketing teams, and litigators. It begins by framing the dispute and capturing every version of the accused use, then puts first the threshold question from Jack Daniel's Properties v. VIP Products: whether the accused party uses the term as a mark for its own goods. Separate parts work through classic descriptive fair use under 15 U.S.C. § 1115(b)(4), nominative fair use under each circuit's test, comparative advertising, expressive works under Rogers v. Grimaldi, parody, and the dilution exclusions in § 1125(c)(3). Later parts cover constitutional arguments, pleading and motion practice, evidence and surveys, pre-launch clearance of advertising and product copy, and the decisions each side makes around a cease-and-desist letter. Each item carries a short note on why it matters and the statute, case, or treatise section behind it, and the checklist closes with common mistakes and a table of key authorities.

A product manager sends over a draft landing page with one question: "Can we say this?" The page promises that the new app "works with Ledgerline," prices itself against three named competitors, and calls its reporting feature "instant insights," two words a rival registered for analytics software six years ago. Each of those choices raises a different fair use question, and each answer turns on facts nobody has gathered yet. This checklist is the order in which to gather them.

How to use this checklist

Work Parts 1 to 3 for every matter. They frame the dispute, capture the accused use, and answer the threshold question the Supreme Court made decisive in 2023. Then go to the part that fits the use: Part 4 for words that describe the user's own product, Part 5 for references to someone else's product, Part 6 for comparative advertising, Parts 7 and 8 for expressive works and parody, and Part 9 when the claimant owns a famous mark. Parts 10 to 12 cover constitutional arguments, litigation, and evidence. Part 13 is for marketing and legal teams clearing copy before launch, and Parts 14 and 15 are the decisions each side makes around a cease-and-desist letter. Each item is phrased as an action, followed by a short note and the authority behind it.

The short version. Trademark law protects a mark as a signal of source, not the words in it. Three doctrines mark the edge of that protection. Classic (descriptive) fair use lets a business use a term "otherwise than as a mark" to describe its own goods in good faith, 15 U.S.C. § 1115(b)(4), and the defendant does not have to disprove confusion to win. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004). Nominative fair use lets anyone name the plaintiff's own product in order to sell, repair, compare, or comment on it, so long as they take no more than they need and imply no sponsorship. New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992). Expressive works get the protective test of Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) in the circuits that use it. All three run into the same wall: after Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023), none of them rescues a defendant that uses the borrowed mark as its own brand. That is why Part 3 comes before everything else.

For the doctrine with full case discussion, read Trademark Fair Use: Descriptive Use, Nominative Use, and Expressive Works After Jack Daniel's. For the same ground told as a litigation sequence, see Asserting or Defeating a Trademark Fair Use Defense: A Practical Guide. Ready-to-adapt guidelines, letters, and briefing outlines are in the Trademark Fair Use Toolkit: Nominative Use Guidelines, Comparative Advertising Clearance, and Defense Briefing.

Part 1: Frame the dispute before you analyze it

• Write down the question you are actually answering. Pre-launch clearance, a demand letter in hand, a served complaint, and a decision whether to enforce all use the same analysis but produce different outputs: a go or no-go with fixes, a response strategy, a defense plan, or a demand that will hold up when the other side's lawyer reads it.
• List every claim that is asserted or likely. Infringement of a registered mark under 15 U.S.C. § 1114; infringement of an unregistered mark, false endorsement, or false advertising under 15 U.S.C. § 1125(a); dilution under § 1125(c); cybersquatting under § 1125(d); and state statutory and common law claims. The defenses differ by claim. Descriptive fair use is written into § 1115(b)(4) for registered marks and applied by courts to § 1125(a) claims as well; the dilution exclusions appear only in § 1125(c)(3); nominative use and Rogers are judge-made.
• Pull the registration and read it. Check the drawing (standard characters or a stylized "special form"), the goods and services, the registration date, and incontestable status under 15 U.S.C. § 1065. A stylized registration may not protect the words standing alone: a registration for "Own Your Power" in light blue script did not stop Oprah Winfrey's magazine, event, and website from using the phrase in plain type, because the words by themselves were descriptive and lacked secondary meaning. Kelly-Brown v. Winfrey, 659 F. App'x 55 (2d Cir. 2016).
• Do not let incontestability end the conversation. An incontestable registration cannot be challenged as merely descriptive, Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985), but § 1115(b) makes incontestable status subject to the descriptive fair use defense. KP Permanent itself involved an incontestable registration.
• Date the competing uses. Record when the claimant registered and when the accused party first used the term. Descriptive use that predates the registration is one of the considerations the Ninth Circuit listed on remand in KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596 (9th Cir. 2005).
• Identify the controlling circuit. Nominative fair use has at least four formulations, and Rogers survives in some circuits and was never adopted in others. Part 5 has the circuit map.
• Confirm the forum. Fair use defends against liability in court. In an opposition or cancellation before the Trademark Trial and Appeal Board, an applicant asking to register a term as a mark cannot coherently claim to use it otherwise than as a mark; the Board's tools for descriptive terms are refusals under 15 U.S.C. § 1052 and cancellation under 15 U.S.C. § 1064.

Notes. The most common framing mistake is analyzing the word instead of the claim. A use that is safe from an infringement claim can still draw a false advertising or dilution claim, and each has its own elements and defenses. The distinctiveness side of the dispute (whether the claimant's words deserve protection at all) is covered in the Acquired Distinctiveness and Genericness Evidence Checklist: A Practical Checklist.

Part 2: Capture the accused use exactly as consumers see it

• Collect every version of the use. Packaging, labels, hangtags, marketplace listings, ads, landing pages, app-store pages, social posts, hashtags, influencer content, email subject lines, domain names, account handles, paid-search keywords, metatags, and alt text. Fair use is judged use by use: the Ninth Circuit reversed a summary judgment that had treated a catalog title, a promotional reference, and an online ad as one use. Marketquest Group, Inc. v. BIC Corp., 862 F.3d 927 (9th Cir. 2017).
• Capture the presentation, not just the words. Note type size, font, color, capitalization, placement relative to the house mark, and any ™ or ® symbol. Courts decide "use as a mark" from exactly these details; a jury could find trademark use where Victoria's Secret printed "Delicious" across a tank top in the same style it used for its own sub-brands. Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Management, Inc., 618 F.3d 1025 (9th Cir. 2010).
• Preserve it in admissible form. Use dated captures that show the URL and capture time, and keep the person who made them available to testify. Authentication runs through Fed. R. Evid. 901; see Authenticating Website Evidence: A Practical Checklist.
• Gather what the accused party has said about the term. Pleadings, trademark applications and registrations, license agreements, press releases, investor decks, and internal naming documents. In Jack Daniel's, VIP's own complaint alleged that it owned the "Bad Spaniels" mark, and VIP had registered other parody names; the Court relied on both to find use as a mark.
• Collect the creative history. Creative briefs, naming memos, mood boards, drafts, and emails or chat messages that mention the claimant. These documents decide good faith (Part 4) and intent (Part 8) far more often than testimony does.
• Issue a hold once a dispute is reasonably anticipated. Losing drafts or chat logs after that point can bring sanctions under Fed. R. Civ. P. 37(e). The Litigation Hold and Evidence Preservation Checklist: A Practical Checklist has the mechanics.

Notes. Marketplace titles, keyword bids, and social handles are where careful brand copy goes to die. A product page can describe a competitor's product perfectly while the listing title, which the seller typed in a hurry, reads like a brand. Capture both.

Part 3: Answer the threshold question: is the term used as a mark?

• Ask whether the accused term identifies the source of the user's own goods. Rogers 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." Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023). The statute defines a trademark by that function. 15 U.S.C. § 1127.
• Score the indicators of mark use. Each of these points toward use as a mark:
  • the term sits where brands normally go (front panel, hangtag, product title, app name, shoebox);
  • it carries ™ or ®, a logo treatment, or styling that sets it apart from surrounding text;
  • it names a product line, series, collection, or business rather than a single work;
  • the user applied to register it, licensed it, or has enforced it against others;
  • it repeats across channels in a pattern that builds a sub-brand. Kelly-Brown v. Winfrey, 717 F.3d 295 (2d Cir. 2013).
• Score the indicators of non-mark use. Sentence-case presentation in running text, a dominant house mark, and a single descriptive appearance point the other way. Cosmetically Sealed Industries, Inc. v. Chesebrough-Pond's USA Co., 125 F.3d 28 (2d Cir. 1997). A famous house mark nearby is not a free pass, though: "Gatorade is Thirst Aid" still used THIRST AID as a mark. Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947 (7th Cir. 1992).
• Record the consequences of a "yes." If the term is used as a mark, classic fair use fails its first element; Rogers is off the table; the dilution exclusion for parody and commentary does not apply; and the noncommercial-use exclusion does not shield it either. Jack Daniel's, 599 U.S. 140. Move to a full likelihood-of-confusion analysis, in which parody remains a relevant factor, using the Trademark Likelihood-of-Confusion Analysis: A Practical Checklist.
• Analyze each element of a composite use separately. One label can carry a parody brand name (mark use) and descriptive copy (not mark use). The answer can differ line by line, and so can the defense.

Notes. Since 2023, courts have used this question to dispose of art and parody defenses quickly. MSCHF's distorted "Wavy Baby" sneakers, Vans, Inc. v. MSCHF Product Studio, Inc., 88 F.4th 125 (2d Cir. 2023); the name of a news business, Punchbowl, Inc. v. AJ Press, LLC, 90 F.4th 1022 (9th Cir. 2024); and "MetaBirkins" NFTs, Hermès International v. Rothschild, 678 F. Supp. 3d 475 (S.D.N.Y. 2023), all ended up in ordinary trademark territory. Assume the threshold will be contested, and build the record for it first. The Seventh Circuit's illustration is worth repeating to clients: the maker of "Crunchy" brand potato chips cannot stop competitors from describing their chips as crunchy, but it may be able to stop chips branded "Crunchy." Sorensen v. WD-40 Co., 792 F.3d 712 (7th Cir. 2015).

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

• Confirm the term describes the user's own goods. The defense covers a term "descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin." 15 U.S.C. § 1115(b)(4). Ingredients, flavors, functions, shapes, qualities, and places all qualify: "fish fry" for batter mix, Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983); "sweet-tart" for cranberry juice, Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055 (7th Cir. 1995); a pine-tree shape for a pine-scented holiday freshener, Car-Freshner Corp. v. S.C. Johnson & Son, Inc., 70 F.3d 267 (2d Cir. 1995); and "Long-Term Corrosion Inhibitor" on a lubricant can. Sorensen, 792 F.3d 712.
• Prove the ordinary meaning with outside sources. Dictionaries, trade usage, competitors' copy, and the claimant's own descriptive use of the phrase. In the Kelly-Brown litigation, the plaintiffs' own descriptive use of "own your power" in their advertising helped show that the phrase was descriptive. Kelly-Brown, 659 F. App'x 55.
• Separate stock phrases from borrowed hooks. "Seal it with a Kiss!!" on a lipstick display drew on a fixture of the language, Cosmetically Sealed, 125 F.3d 28; "Swing Swing Swing" in a golf ad that evoked the standard "Sing, Sing, Sing" did not, and the Second Circuit sent the case to trial. EMI Catalogue Partnership v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56 (2d Cir. 2000).
• Ignore the category of the claimant's mark. The defense is available whether the plaintiff's mark is descriptive, suggestive, arbitrary, or fanciful; the question is how the defendant used the words. Fortune Dynamic, 618 F.3d 1025; Car-Freshner, 70 F.3d 267 (affirming on fair use after the trial court wrongly confined the defense to descriptive marks).
• List the alternatives. Note other words that would describe the feature as well. The availability of alternative descriptive terms is one of the KP Permanent remand considerations, and a defendant who passed over plainer words has some explaining to do. KP Permanent, 408 F.3d 596.
• Assess the degree of likely confusion anyway. The defendant has no burden to negate confusion, and some confusion is compatible with fair use, KP Permanent, 543 U.S. 111, but the Court left room for the degree of confusion to bear on whether a use is fair. Do not tell a client that confusion is irrelevant.
• Build the good-faith record. Knowledge of the claimant's mark is not bad faith. Star Industries, Inc. v. Bacardi & Co., 412 F.3d 373 (2d Cir. 2005); Packman v. Chicago Tribune Co., 267 F.3d 628 (7th Cir. 2001). Neither is skipping counsel, Car-Freshner, 70 F.3d 267, nor skipping a search or continuing after a demand 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). What loses this element is evidence that the term was chosen to trade on the claimant's goodwill or styled to look like the claimant's mark. EMI, 228 F.3d 56.
• Make the house mark the biggest brand on the page. Prominent use of the user's own mark supports both non-mark use and good faith, though it guarantees neither. SportFuel, Inc. v. PepsiCo, Inc., 932 F.3d 589 (7th Cir. 2019); Sands, 978 F.2d 947.
• For personal names, read the sale documents first. The statute protects use of one's "individual name in his own business," but a founder who sold the name may have contracted the right away. Use the full name, describe the person's role, and say they are no longer affiliated, as the advertisements did in Hensley Manufacturing v. ProPride, Inc., 579 F.3d 603 (6th Cir. 2009). In JA Apparel Corp. v. Abboud, 568 F.3d 390 (2d Cir. 2009), the scope of the sale contract had to be resolved before the fair use question could be answered.

Notes. Classic fair use is decided on summary judgment often enough that the record matters from the first week. Cosmetically Sealed, International Stamp Art, Inc. v. United States Postal Service, 456 F.3d 1270 (11th Cir. 2006), Packman, SportFuel, Sorensen, and Dessert Beauty were all summary judgments affirmed on appeal. Where the case turns on whether a phrase is a familiar expression or a borrowed hook, expect a trial. Restatement (Third) of Unfair Competition § 28 and McCarthy §§ 11:45 to 11:49 state the doctrine in treatise form.

Part 5: Nominative fair use: referring to someone else's product

• Confirm that the use refers to the claimant or its product. Nominative use names the plaintiff's own goods (to resell, repair, compare, review, or criticize them); classic fair use describes the defendant's goods. In the Ninth Circuit the nominative test governs whenever the defendant uses the mark to describe the plaintiff's product, even if its ultimate goal is to sell its own. Cairns v. Franklin Mint Co., 292 F.3d 1139 (9th Cir. 2002).
• Apply the controlling circuit's framework. The analytical box decides who carries the burden on a summary judgment record.

• Test necessity. Ask whether the product is readily identifiable without the mark. For a named product it almost never is: "we repair e-bikes" tells the customer less than "we repair Kestrel e-bikes." New Kids, 971 F.2d 302.
• Use only as much as you need. Plain words, not logos, stylized lettering, or trade dress. A former Playmate of the Year could describe herself that way, but repeating "PMOY '81" as wallpaper on every page went too far. Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002). The Lexus broker's use of the stylized mark and the "L" logo also exceeded what reference required. Tabari, 610 F.3d 1171; see Applied Underwriters, Inc. v. Lichtenegger, 913 F.3d 884 (9th Cir. 2019).
• Describe the relationship accurately. Avoid "official," "authorized," "certified," "partner," and "approved" unless they are true and current. When a school advertised an instructor as a "Master CISSP," the owner of the certification mark argued that the title implied a credential it never awarded, and the Second Circuit vacated summary judgment for the school because confusion about sponsorship or affiliation counts. Security University, 823 F.3d 153. The Third Circuit asks whether the use accurately portrays the parties' relationship. Century 21, 425 F.3d 211.
• Look at the whole presentation for borrowed marquee value. Billing a touring band as "The Beach Boys" when it was one member and friends failed the test, Brother Records, Inc. v. Jardine, 318 F.3d 900 (9th Cir. 2003); so did sprinkling a supplement brand through a website to sell other products, Horphag Research Ltd. v. Pellegrini, 337 F.3d 1036 (9th Cir. 2003), and game-day shirts designed to evoke the universities themselves. Board of Supervisors for Louisiana State University v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008).
• Put any disclaimer where it will be read. A large disclaimer at the top of the Lexus broker's site counted in its favor. Tabari, 610 F.3d 1171. A small non-affiliation notice on the back of the Bad Spaniels hangtag did not keep the Supreme Court from treating the toy's name as a mark, and a disclaimer printed sideways in tiny type was noticed by about 3.5 percent of survey respondents in Anheuser-Busch, Inc. v. Balducci Publications, 28 F.3d 769 (8th Cir. 1994).
• Keep the mark out of your names, domains, and handles unless each one is defensible. A domain containing a mark is not automatically infringing, and the Ninth Circuit vacated an injunction that barred every domain containing "Lexus." Tabari, 610 F.3d 1171. But the Sixth Circuit held that PETERBILT and KENWORTH in a dealer locator's domain names went beyond reference. PACCAR, 319 F.3d 243. Noncommercial gripe sites are analyzed differently. Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005).
• For resale and repair, sell genuine goods and say "independent." Truthful statements that goods are genuine, repackaged, or reconditioned are lawful with clear disclosure. Prestonettes, Inc. v. Coty, 264 U.S. 359 (1924); Champion Spark Plug Co. v. Sanders, 331 U.S. 125 (1947). An independent mechanic could advertise Volkswagen repair, Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1969), and a one-man shop could list KIRBY among the vacuum brands it sold and serviced. Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477 (5th Cir. 2004). Check for material differences before treating gray-market goods as genuine; see Gray Market Goods and the First Sale Doctrine: Parallel Imports, Material Differences, and Exhaustion.
• For marketplaces and keyword ads, look at what the consumer actually sees. eBay could use TIFFANY to advertise genuine Tiffany goods available on its site. Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010). Selling a competitor's mark as a search keyword is a use in commerce, Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009), but liability still depends on whether the ad and the results page, as labeled, are likely to confuse. Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011); Multi Time Machine, Inc. v. Amazon.com, Inc., 804 F.3d 930 (9th Cir. 2015). The online issues get full treatment in the Online Marketplace Trademark Enforcement Checklist: A Practical Checklist.

Notes. In the Ninth and Second Circuits, a defendant who refers accurately and modestly usually wins without carrying a burden of proof. In the Third Circuit, be ready to prove fairness even after losing the confusion fight. The risk in a nominative case is confusion about endorsement or affiliation rather than source, and a court must actually find that risk before enjoining a truthful reference. Swarovski Aktiengesellschaft v. Building No. 19, Inc., 704 F.3d 44 (1st Cir. 2013). McCarthy § 23:11 collects the circuit variations.

Part 6: Comparative advertising and "compare to" claims

• Name the competitor's product in plain words. A seller may identify the product it copied or competes with, absent misrepresentation or confusion about source or sponsorship; otherwise a trademark would become a monopoly of the product. Smith v. Chanel, Inc., 402 F.2d 562 (9th Cir. 1968); Saxlehner v. Wagner, 216 U.S. 375 (1910). The Federal Trade Commission encourages truthful naming of competitors. 16 C.F.R. § 14.15.
• Inventory every express and implied claim. Superiority ("faster than"), parity ("as good as"), price, and preference claims each need support. A claim can be literally false on its face or by necessary implication, Time Warner Cable, Inc. v. DIRECTV, Inc., 497 F.3d 144 (2d Cir. 2007), and nominative fair use is no defense to falsity under § 1125(a)(1)(B).
• Hold the substantiation before publication. The FTC requires a reasonable basis for objective claims at the time they are made, under 15 U.S.C. § 45 and 15 U.S.C. § 52 and its 1984 Policy Statement Regarding Advertising Substantiation. If the ad says or implies that tests prove the claim (an "establishment" claim), a challenger can win by showing that the tests are not sufficiently reliable to establish it. Castrol, Inc. v. Quaker State Corp., 977 F.2d 57 (2d Cir. 1992). A specific, measurable superiority claim that invokes testing is not puffery, and it can be enjoined as literally false once the challenger proves it untrue. Castrol Inc. v. Pennzoil Co., 987 F.2d 939 (3d Cir. 1993).
• Separate facts from puffery. A vague boast like "Better Ingredients. Better Pizza." is not actionable by itself, but the same slogan tied to specific comparisons can carry a measurable claim. Pizza Hut, Inc. v. Papa John's International, Inc., 227 F.3d 489 (5th Cir. 2000).
• Compare like with like, and date the comparison. Match product tiers, versions, and pricing terms; footnote sources; record when the data was collected; set a review date. Competitors change prices more often than marketing teams update charts.
• Do not alter or animate the competitor's logo. The Second Circuit affirmed an injunction under New York's dilution statute against a commercial that redrew and animated John Deere's leaping-deer logo. Deere & Co. v. MTD Products, Inc., 41 F.3d 39 (2d Cir. 1994).
• Keep "compare to" from implying "made by." Store-brand and "dupe" marketing is lawful when truthful, but copied colors, layouts, and package shapes can suggest a common source that the words disclaim.
• Check who can sue. A competitor with commercial injury proximately caused by the ad has statutory standing under § 1125(a). Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014). Many comparative disputes also go to the National Advertising Division of BBB National Programs, which moves faster than a court and publishes its decisions.

Notes. Comparative advertising is the one fair use setting where the reference is almost always fine and the claim is almost always the problem. For the falsity side, use the False Advertising Claim Checklist: A Practical Checklist. The toolkit linked above has a clearance memo and a model comparison chart.

Part 7: Expressive works: titles and content under Rogers

• Confirm the use appears in the title or content of an expressive work. Books, films, songs, games, photographs, and paintings qualify. The Ninth Circuit applied Rogers to the song "Barbie Girl," Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), to a strip club depicted in a video game, E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008), and to a television drama called Empire. Twentieth Century Fox Television v. Empire Distribution, Inc., 875 F.3d 1192 (9th Cir. 2017).
• Then ask whether the title also works as a brand. The title of a single work does not ordinarily function as a mark, but a series title, a merchandise line, a newsletter or business name, or an NFT collection may. If it does, Rogers is unavailable. The Ninth Circuit withdrew its own 2022 decision applying Rogers to the name of a news business, Punchbowl, Inc. v. AJ Press, LLC, 52 F.4th 1091 (9th Cir. 2022), opinion withdrawn, 78 F.4th 1158 (9th Cir. 2023), and held after Jack Daniel's that the test did not apply. Punchbowl, 90 F.4th 1022.
• If Rogers applies, test artistic relevance. The bar is low, but it exists: a jury could find that the title of OutKast's song "Rosa Parks" had no artistic relevance to its lyrics. Parks v. LaFace Records, 329 F.3d 437 (6th Cir. 2003).
• Test whether the use is explicitly misleading. Look for express false statements of source or endorsement ("the authorized biography"). The Second Circuit applies the Polaroid factors here but requires confusion to be "particularly compelling." Twin Peaks Productions, Inc. v. Publications International, Ltd., 996 F.2d 1366 (2d Cir. 1993). Pasting a catchphrase onto a greeting card with little added expression created a triable question in Gordon v. Drape Creative, Inc., 909 F.3d 257 (9th Cir. 2018).
• Build an alternative confusion record anyway. The Supreme Court took no position on Rogers, and three Justices wrote that lower courts should "handle Rogers v. Grimaldi with care." Prepare to win under the ordinary factors too. Without reaching the First Amendment question at all, the Seventh Circuit affirmed dismissal of a claim over fictional software in a Batman film because confusion was implausible. Fortres Grand Corp. v. Warner Bros. Entertainment Inc., 763 F.3d 696 (7th Cir. 2014).
• Ask whether the use is "in connection with" goods or services at all. An online article that mocked an organization's name was not, and its criticism also fell within the dilution exclusions. Radiance Foundation, Inc. v. NAACP, 786 F.3d 316 (4th Cir. 2015).
• Flag any right of publicity overlap. When the work uses a real person's name or likeness, state-law claims run on separate tests; use the Expressive Work Right of Publicity Risk Checklist: A Practical Checklist.

Notes. Where the work itself shows the use, Rogers defenses can still be decided on the pleadings: the Southern District of New York dismissed a claim over a knockoff bag that a character in The Hangover: Part II called a "Lewis Vuitton." Louis Vuitton Malletier S.A. v. Warner Bros. Entertainment Inc., 868 F. Supp. 2d 172 (S.D.N.Y. 2012). The court can consider the film because the complaint depends on it.

Part 8: Parody: the joke has to land

• Identify the target. A parody comments on the mark or its owner. Borrowing a famous mark to sell something else is not parody of the mark: the "Velvet Elvis" nightclub was mocking 1960s lounge culture, not Elvis, Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998), and a repair shop's take on the Harley-Davidson logo promoted its own competing services. Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806 (2d Cir. 1999). Courts sometimes borrow the copyright definition of parody from Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994), but the trademark test is different, and a parody that wins under 17 U.S.C. § 107 can lose under the Lanham Act.
• Check that both messages arrive at once. A parody must call the original to mind and, at the same moment, signal that it is not the original. "Chewy Vuiton" plush toys did, Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007), as did totes printed "My Other Bag." Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 674 F. App'x 16 (2d Cir. 2016). A domain name that revealed the joke only after the visitor arrived did not. People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001).
• Measure how close the copy is. The closer the copy, the weaker the joke. The "Wavy Baby" was too close to the Old Skool for its commentary to dispel confusion, Vans, 88 F.4th 125, and the "Michelob Oily" ad used the brewer's own clip art and a ® symbol. Balducci, 28 F.3d 769.
• Decide whether the parody name is the product's name. If it is, Part 3 governs. Parody still counts in the confusion analysis, because "consumers are not so likely to think that the maker of a mocked product is itself doing the mocking." Jack Daniel's, 599 U.S. 140.
• Test the parody on real people, carefully. Justice Sotomayor's concurrence warned that survey respondents may think every parody needs permission, so a survey can turn a legal misunderstanding into apparent confusion. Surveys still win cases: Anheuser-Busch obtained a preliminary injunction against VIP's "Buttwiper" dog toy on its infringement claim, relying on a shopping-mall survey, while its dilution claim failed for lack of proof. Anheuser-Busch, Inc. v. VIP Products, LLC, 666 F. Supp. 2d 974 (E.D. Mo. 2008).
• Give noncommercial commentary its due. Parody that does not sell anything but itself receives the strongest protection. L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir. 1987) (magazine parody of a catalog).

Part 9: Dilution claims and the § 1125(c)(3) exclusions

• Test fame first. The claimant's mark must be "widely recognized by the general consuming public of the United States" as a designation of source, and it must have been famous before the accused use began. 15 U.S.C. § 1125(c). Fame in a niche market does not count. Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012).
• Identify the theory and demand evidence for it. Blurring impairs distinctiveness; tarnishment harms reputation. Association alone is not harm: "That a consumer may associate a negative-sounding junior mark with a famous mark says little of whether the consumer views the junior mark as harming the reputation of the famous mark." Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009).
• Map the use to an exclusion. Section 1125(c)(3) excludes (A) fair use, including nominative and descriptive use, comparative advertising, and "identifying and parodying, criticizing, or commenting upon" the famous mark owner, but only when the use is "other than as a designation of source for the person's own goods or services"; (B) news reporting and news commentary; and (C) noncommercial use. After Jack Daniel's, exclusion (C) does not cover a parody used as a mark. A song that mocked a doll, by contrast, was noncommercial. MCA Records, 296 F.3d 894.
• If the parody is used as a mark, argue parody inside the blurring factors. The exclusion is lost, but a court may still consider an obvious parody in deciding whether blurring is likely. Haute Diggity Dog, 507 F.3d 252.
• Remember that tarnishment does not require confusion. On remand in the Bad Spaniels case, the district court in 2025 found no likelihood of confusion but held VIP liable for dilution by tarnishment. VIP's appeal was pending in the Ninth Circuit when this checklist was last revised.
• Check state dilution statutes separately. They may not track the federal exclusions; Deere was decided under New York law.
• Do not count on parody at the TTAB. The Board sustained an opposition to THE HOUSE THAT JUICE BUILT, and to a top-hat-and-syringe design aimed at the Yankees' logo, on the ground of likely dilution by blurring. It added that it found it "virtually impossible to conceive of a situation where a parody defense to a dilution claim can succeed in a case before the Board," because an applicant swears that its mark will identify source. New York Yankees Partnership v. IET Products and Services, Inc., 114 USPQ2d 1497 (TTAB 2015).

Notes. For fame, blurring, and tarnishment in depth, see Trademark Dilution Under the TDRA: Blurring, Tarnishment, and What It Means to Be Famous.

Part 10: First Amendment and constitutional arguments

• Separate registration cases from infringement defenses. Matal v. Tam, 582 U.S. 218 (2017) and Iancu v. Brunetti, 588 U.S. 388 (2019) struck down the disparagement and "immoral or scandalous" registration bars, and Vidal v. Elster, 602 U.S. 286 (2024) upheld the names clause. They govern what the Office may refuse to register, not whether a use infringes. Background is in The Washington Redskins Trademark Troubles: Disparagement, Matal v. Tam, and the Aftermath.
• Classify the speech. Advertising format, reference to a specific product, and economic motive point toward commercial speech, Bolger v. Youngs Drug Products Corp., 463 U.S. 60 (1983), which receives intermediate scrutiny. Central Hudson Gas & Electric Corp. v. Public Service Commission, 447 U.S. 557 (1980). The Court also rejected a First Amendment challenge to the Olympic Committee's statutory control of "Olympic" as applied to the promoter of the "Gay Olympic Games." San Francisco Arts & Athletics, Inc. v. United States Olympic Committee, 483 U.S. 522 (1987).
• Plead constitutional challenges early and give notice. Raise them in the answer under Fed. R. Civ. P. 8, and file the notice that Fed. R. Civ. P. 5.1 requires so the Attorney General can intervene under 28 U.S.C. § 2403. On the Bad Spaniels remand, the district court declined to reach VIP's facial challenge to the tarnishment provision because VIP had not raised it in its original pleadings.
• Do not expect a state anti-SLAPP statute to end a Lanham Act case. State anti-SLAPP statutes do not apply to federal claims, and several circuits will not apply them in federal court at all; they may matter only for state-law claims pleaded alongside. See Filing an Anti-SLAPP Motion: A Practical Guide.

Part 11: Pleading and motion practice

• Plead every defense you may need, with facts. The Supreme Court calls descriptive fair use an affirmative defense, so plead it under Fed. R. Civ. P. 8(c) with the facts that support each element. In the Third Circuit, plead nominative fair use as an affirmative defense; elsewhere, deny confusion and plead it anyway so no one can argue waiver. Add Rogers and the First Amendment, the dilution exclusions, and any constitutional challenge. Answering a Federal Complaint: Denials, Affirmative Defenses, Counterclaims, and Judgment on the Pleadings covers the mechanics.
• Do not plead away your own defense. A declaratory judgment complaint that alleges ownership of the accused term as a trademark answers the Part 3 question for the other side, as VIP's did.
• Move to dismiss when the complaint itself shows the use. When the plaintiff attaches the accused ads, a court can decide fair use on the pleadings under Fed. R. Civ. P. 12; the Sixth Circuit affirmed dismissal where the attached ads always used the full name "Jim Hensley" and said he was no longer affiliated with the plaintiff. Hensley, 579 F.3d 603. A plausible allegation of mark use or bad faith defeats an early motion. Kelly-Brown, 717 F.3d 295. Ask the court to consider the work itself, or facts not subject to reasonable dispute, under Fed. R. Evid. 201.
• Build for summary judgment from the first day of discovery. The defendant carries the burden on descriptive fair use; the plaintiff carries the burden on confusion. KP Permanent, 543 U.S. 111. A movant without the burden can win by pointing to the absence of evidence, Celotex Corp. v. Catrett, 477 U.S. 317 (1986), and the non-movant needs evidence a reasonable jury could credit, Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986); see Fed. R. Civ. P. 56 and the Summary Judgment Motion Checklist: A Practical Checklist.
• Fight a preliminary injunction on likelihood of success. A plaintiff that shows likely success now gets a rebuttable presumption of irreparable harm, 15 U.S.C. § 1116(a), but the other factors of Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008) still apply. Ask for a bond under Fed. R. Civ. P. 65(c); MSCHF lost that argument because it never asked. Vans, 88 F.4th 125.
• Price the fee and profits risk on both sides. Courts may award fees in "exceptional cases" under 15 U.S.C. § 1117(a), and most circuits now apply the totality standard of Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014) to Lanham Act cases. A plaintiff that sues over plainly descriptive or nominative use takes that risk; a defendant that loses should know that willfulness is not a precondition to an award of profits. Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 212 (2020). See Lanham Act Attorney's Fees Under 15 U.S.C. § 1117(a): A Practical Guide.
• Decide whether to file first. A party threatened with suit can seek a declaratory judgment under 28 U.S.C. § 2201, as VIP did; the Declaratory Judgment Checklist: A Practical Checklist covers the jurisdictional requirements.

Part 12: Evidence and proof

• Build one exhibit for each materially different use. Marketquest, 862 F.3d 927. Where the uses are voluminous, prepare a summary chart under Fed. R. Evid. 1006 and make the underlying items available.
• Prove descriptiveness with neutral sources. Dictionaries, trade press, competitor copy, and the claimant's own usage carry more weight than a witness who says the words "just seemed right."
• Prove good faith with documents made at the time. Naming memos that state the descriptive reason for a choice, legal review notes, a clearance search, and counsel's advice. The Shield of Good Faith: How Trademark Clearance Searches, Attorney Opinions, and USPTO Approval Protect Against Willful Infringement Claims explains how those records are used.
• Handle confusion anecdotes with hearsay rules in mind. Misdirected emails and calls are usually offered for the declarant's state of mind under Fed. R. Evid. 803(3) or as non-hearsay under Fed. R. Evid. 801(c); count them against the volume of interactions, because a handful in millions proves little.
• Design surveys for the right universe and with a control. The vacuum maker's survey failed because it questioned existing Kirby owners rather than the people who would read the ad. Scott Fetzer, 381 F.3d 477. Expert testimony must meet Fed. R. Evid. 702. Use the Trademark Consumer Survey Design: A Practical Checklist, and in parody cases write questions that measure source confusion rather than beliefs about what the law requires.
• Prove dilution with evidence about these marks. In the long-running "Charbucks" litigation, the Second Circuit ultimately affirmed a finding of no likely dilution by blurring where the marks were only minimally similar. Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 736 F.3d 198 (2d Cir. 2013).

Part 13: Clearing advertising and product copy before launch

• Run descriptive words through Part 4 before they ship. Use them in lowercase, inside sentences, near the house mark, and never with ™. A word that will be a product or feature name is a new mark and needs clearance, not a fair use opinion; use the Trademark Clearance Search Checklist: A Practical Checklist.
• Write compatibility statements as testable facts. "Works with," "compatible with," and "for use with" are fine if true and tested. Use no third-party logos unless a partner program allows it, and if the company is in one, follow the program's brand rules: a contract you signed overrides the fair use you would otherwise have.
• Clear comparison charts as claims. Apply Part 6 to every cell of the chart, not just the headline.
• Treat influencer, affiliate, and reseller content as the company's own. The FTC's Endorsement Guides, 16 C.F.R. Part 255, require disclosure of material connections, and a paid creator who misuses a competitor's mark creates a problem for the brand that paid. See Sponsorship, Endorsement, and Influencer Agreements: A Practical Guide.
• Send parody campaigns to legal before the creative team falls in love with them. If the parody name will appear on a product, Part 3 decides most of the risk.
• Keep a review log. Record the date, the reviewer, the version approved, and the basis. Good faith is far easier to prove with a log than with recollection.
• Check insurance before there is a claim. Standard commercial general liability forms cover some "advertising injury," such as infringement of trade dress or a slogan in the insured's own advertisement, but exclude most trademark infringement. Read the policy now, and give notice promptly when a demand arrives.

Part 14: Around a cease-and-desist letter

For the brand owner, before sending

• Run Parts 3 to 9 on the target's use first. Name the specific element that causes the problem (a logo, the styling, a domain, an unsupported claim) instead of objecting to every mention of the brand.
• Ask for a fix in proportion to the problem. Dropping a logo, adding "independent," or moving a disclaimer often resolves a nominative dispute in a week.
• Count the costs of overreaching. An aggressive letter can provoke a declaratory judgment action in the recipient's home court, a fee motion, and unwelcome publicity, and any complaint that follows must satisfy Fed. R. Civ. P. 11. The Drafting a Trademark Cease-and-Desist Letter Checklist: A Practical Checklist has the full sequence.
• Audit your own descriptive uses of the term. The other side will find them, as the Kelly-Brown defendants did.

For the accused user, after receiving one

• Preserve first, then analyze. Capture every version of the use (Part 2) before anyone edits a page.
• Map each objection to a doctrine and grade it. Most letters mix a weak objection (mentioning the brand at all) with a stronger one (using its logo); answer them separately.
• Make low-cost changes without conceding liability. Removing a logo or adding a disclaimer is often cheaper than arguing about it, and a change described as voluntary is not an admission.
• Respond with facts. Dates of use, the ordinary meaning of the words, the alternatives considered, the prominence of the house mark, and the disclaimers in place. Use the Responding to a Trademark Cease-and-Desist Letter Checklist: A Practical Checklist.
• Consider a declaratory judgment and give notice to insurers. Both decisions have deadlines that do not wait for negotiations to end.

Common mistakes

• Treating "fair use" as one doctrine, or arguing the four copyright factors in a trademark brief.
• Leading with Rogers or parody when the client uses the term as its own brand.
• Alleging in your own complaint, application, or press release that the accused term is your trademark.
• Putting a competitor's logo in a comparison chart, or ™ next to borrowed descriptive words.
• Treating knowledge of the claimant's mark as bad faith (claimants) or ignoring documents showing the term was chosen because of the claimant's success (defendants).
• Relying on a small disclaimer in a place nobody looks.
• Forgetting dilution after winning on confusion, or forgetting false advertising after winning on fair use.
• Raising constitutional challenges after the pleadings close.
• Commissioning a parody survey that measures what respondents think the law requires.

Key authorities at a glance

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

Related Documents

Related Articles

• Trademark Fair Use: Descriptive Use, Nominative Use, and Expressive Works After Jack Daniel's: the doctrine behind this checklist, with the leading cases explained.
• Trademark Liability Online: Keyword Advertising, Marketplaces, and Contributory Infringement After Tiffany v. eBay: resale, keyword, and platform liability in depth.
• Genericness, Genericide, and Acquired Distinctiveness: Where Trademark Protection Begins and Ends: whether the claimant's words deserve protection at all.
• The Right of Publicity and the First Amendment: Transformative Use, Newsworthiness, and the Limits of Owning a Persona: the state-law claims that travel with expressive-use disputes.
• Trademark Dilution Under the TDRA: Blurring, Tarnishment, and What It Means to Be Famous: fame, blurring, and tarnishment.
• False Advertising Under the Lanham Act: Literal Falsity, Materiality, and Competitor Standing: the falsity side of comparative advertising.
• The Washington Redskins Trademark Troubles: Disparagement, Matal v. Tam, and the Aftermath: the First Amendment registration cases.

Related Guides

• Asserting or Defeating a Trademark Fair Use Defense: A Practical Guide: the same issues as a step-by-step litigation sequence.
• Consumer Survey Expert Methodology in Trademark Cases: A Practical Guide: survey formats, universes, and controls.
• Lanham Act Attorney's Fees Under 15 U.S.C. § 1117(a): A Practical Guide: when a weak claim or defense becomes a fee award.

Related Checklists

• Trademark Likelihood-of-Confusion Analysis: A Practical Checklist: the analysis that applies when the threshold answer is "used as a mark."
• Acquired Distinctiveness and Genericness Evidence Checklist: A Practical Checklist: evidence for and against the claimant's rights.
• Online Marketplace Trademark Enforcement Checklist: A Practical Checklist: listings, test purchases, and platform notices.
• Expressive Work Right of Publicity Risk Checklist: A Practical Checklist: clearing names and likenesses in creative works.
• False Advertising Claim Checklist: A Practical Checklist: evaluating comparative and superiority claims.
• Preliminary Injunction and TRO Application Checklist: A Practical Checklist: emergency relief for either side.

Related Toolkits

• Trademark Fair Use Toolkit: Nominative Use Guidelines, Comparative Advertising Clearance, and Defense Briefing: guidelines, letters, pleadings, and briefing outlines built on this checklist.
• False Advertising Toolkit: Substantiation Files, Surveys, and Injunction Briefing: substantiation records and false advertising briefs.
• Trademark Enforcement and Litigation Toolkit: From Watching to Verdict and Appeal: enforcement forms from watch notices to appeal.