Trademark Fair Use Audit Checklist: Clearing Third-Party Marks in Advertising and Content

By Casey Scott McKay · 2024-09-25

This checklist walks a campaign, catalog, site, or content calendar through eleven phases of trademark fair use review, from opening the audit file to signing off and setting the re-audit trigger. It builds a use register of every appearance of every third-party mark, classifies each appearance as descriptive fair use, nominative use, first sale, expressive use, or no defense at all, and then applies the governing test — the three elements of 15 U.S.C. § 1115(b)(4) or the three New Kids prongs in the version your circuit actually uses. Separate phases handle substantiation of comparative and performance claims under the FTC's reasonable-basis standard and § 43(a)(1)(B), remediation of typography, placement, and disclaimers, and clearance of the channel surfaces that generate most complaints: paid search, marketplace titles, subdomains, hashtags, alt text, and influencer disclosures. A tenth phase assembles the good-faith file that decides the intent element long before anyone files suit, and an eleventh sets the escalation matrix, the sign-off memo, and the demand-letter runbook. One matter runs through all eleven phases — Kestrel Parts Co.'s "Fits Your Machine" campaign, thirty-four appearances of eleven third-party marks across seven channels — so the reader can see what a finished audit looks like. Deadlines, fee-bearing forums, and the traps that convert a defensible reference into a source identifier are called out where they arise.

IP and Technology > Trademarks | Checklist | Published 25 September 2024 - Updated 1 July 2025 | Casey Scott McKay - marksy.us

Summary. Eleven phases that take a campaign from raw creative to legal sign-off without a third-party trademark problem surviving to launch. Inventory every appearance of every third-party mark in a use register; classify each one as descriptive fair use, nominative use, first sale, expressive use, or indefensible; apply the elements of 15 U.S.C. § 1115(b)(4) or the New Kids prongs in your circuit's version; substantiate every objective and comparative claim before creative is built around it; remediate typography, placement, and disclaimers; clear the channel surfaces — paid search, marketplace titles, subdomains, hashtags, alt text, endorsement disclosures — that generate most complaints; assemble the good-faith file that will decide the intent element years later; then escalate, sign, archive, and set the re-audit trigger. One invented matter runs top to bottom: Kestrel Parts Co.'s "Fits Your Machine" campaign, thirty-four appearances of eleven third-party marks across seven channels.

Keywords: fair use audit · third-party trademarks in advertising · nominative fair use checklist · descriptive fair use · 15 u.s.c. 1115(b)(4) · new kids three-factor test · comparative advertising substantiation · section 43(a)(1)(b) false advertising · disclaimer drafting · keyword advertising clearance · marketplace listing titles · campaign use register · good faith file · creative remediation · legal sign-off · ftc endorsement guides · nad challenge · first sale doctrine · logo use rules · escalation matrix

What this checklist is for

Clearing a body of advertising or content that uses somebody else's trademark, before it publishes. Not litigation. If a demand letter has already arrived, start at Raising a Trademark Fair Use Defense, Stage 1, and come back here when the fire is out.

Who should use it. In-house and outside advertising counsel reviewing a campaign; brand leads who need to know what will be asked of them; e-commerce and aftermarket sellers whose whole business is describing other people's products; agencies sorting which risks are theirs.

What you need before you start. The full creative set at final size, not comps. The media plan with launch dates by channel. Product specifications and any comparative test data that already exists. Access to the CMS, the Google Ads account, and the marketplace seller accounts. Your own registration numbers. A named business owner who can authorize a change to creative, and a named signer for the audit memo.

The doctrine is elsewhere. This document does not teach the law; it operationalizes it. The elements, the KP Permanent burden holding, and the three-way circuit split on nominative use are developed in Descriptive and Nominative Fair Use: When You Can Legally Use Someone Else's Trademark. Read it once; then work this list.

| Phase | What it produces | Owner | Lead time before launch | |---|---|---|---| | 1. Open the file | Scope memo, audit ID, privilege posture | Counsel | 25 business days | | 2. Inventory | The use register — one row per appearance | Legal ops + brand | 22 days | | 3. Classify | A doctrine bucket for every row | Counsel | 20 days | | 4. Verify | Register status, compatibility, chain of title | Counsel + product | 18 days | | 5. Classic fair use test | Element-by-element ruling on descriptive uses | Counsel | 15 days | | 6. Nominative use test | Prong-by-prong ruling, in the right circuit's version | Counsel | 15 days | | 7. Substantiation | Claim-support matrix, signed by product | Product + counsel | 15 days (start at 40) | | 8. Remediate creative | Redlined copy and art, with reasons | Counsel + creative | 10 days | | 9. Clear the channels | Keyword, marketplace, domain, social, metadata fixes | Media + counsel | 7 days | | 10. Document good faith | Adoption memo, alternatives file, dated archive | Counsel | 5 days | | 11. Escalate and sign | Risk grades, sign-off memo, re-audit triggers | GC or designee | 3 days |

The worked example. Kestrel Parts Co., a Denver seller of aftermarket espresso-machine gaskets, baskets, and portafilters with a service arm, is clearing its Q4 campaign, "Fits Your Machine": one landing page, six product-detail pages, a 45-second pre-roll video, a paid-search campaign, an Amazon storefront refresh, three print ads in Barista Monthly, and a six-email sequence. Launch is 6 October 2026. Kestrel settled a demand from Ferra Macchina S.p.A. earlier in the year and is under a written presentation agreement. The audit opens 14 August 2026 as file KP-FY-26.

Phase 1 — Open the audit file and fix the scope

[ ] Assign a single audit ID, a single legal owner, and a single business owner with authority to change creative, and put all three in the file name.
[ ] Write a one-paragraph scope statement naming every asset inside the audit boundary by channel and publication date, and every asset expressly outside it.
- Why. Half of all post-launch problems come from an asset nobody thought was in the campaign — the sell sheet, the trade-show banner, the reseller's co-op ad.
- Trap. "The website" is not a scope. Name the URL paths.
[ ] Set the audit deadline at concept lock minus 20 business days, and the substantiation deadline at concept lock minus 40.
- Why. Testing is the only gate that cannot be compressed. A comparison chart designed around a claim you cannot support is money spent twice.
[ ] Identify the circuit whose law will govern a dispute — where the company sits, where the campaign runs, where a plausible plaintiff would sue — and record it on the cover page.
- Why. Nominative fair use means three different things in the Second, Third, and Ninth Circuits and is not a labeled doctrine in the Fourth or Sixth. The framework decides who proves what.
- Authority. Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1182–83 (9th Cir. 2010); Century 21 Real Estate Corp. v. LendingTree, Inc., 425 F.3d 211, 222–32 (3d Cir. 2005); Int'l Info. Sys. Sec. Certification Consortium, Inc. v. Security Univ., LLC, 823 F.3d 153, 167–68 (2d Cir. 2016).
[ ] Decide the privilege posture in writing before the first email goes out: who is the client, who is copied, and whether any vendor on the thread breaks privilege.
- Trap. A clearance opinion forwarded into a twelve-person Slack channel is a produced document. Keep conclusions in a counsel-addressed memo and give the business a separate instruction sheet carrying no legal analysis.
[ ] Create a write-once archive for dated captures, with a retention period longer than the campaign plus the state limitations period a laches defense would borrow.
[ ] Confirm the commercial general liability policy's Coverage B "personal and advertising injury" grant and note the notice provision.
- Why. Standard ISO forms reach infringement of another's copyright, trade dress, or slogan in the insured's advertisement, with a carve-back from the IP exclusion for exactly those three. Late notice is the most common reason a real defense obligation evaporates.

Phase 2 — Inventory every third-party mark in the campaign

[ ] Build the use register with one row per appearance, not per mark: use ID, mark as displayed, owner, asset, channel, position, typeface and point size relative to surrounding copy, the exact surrounding sentence, first publication date, approver.
- Why. Fair use is decided appearance by appearance. Playboy Enterprises, Inc. v. Welles, 279 F.3d 796, 802–05 (9th Cir. 2002), let the headline and metatag uses through and struck down the same mark tiled as page wallpaper. One mark, two answers.
[ ] Sweep the twelve surfaces teams forget: alt text, image filenames, page titles, meta descriptions, URL slugs, subdomains, schema.org markup, video captions and end cards, PDF spec sheets, email subject lines, hashtags, social handles and bios.
- Trap. Invisible text is not invisible to a plaintiff. Metatags follow the same reference-versus-decoration rule as visible copy. Welles, 279 F.3d at 803–04.
[ ] Run a mechanical string sweep of the CMS export, the repo, and the ad account against a list of every competitor and OEM name, and reconcile the hits against the register.
- Why. Human review misses the fourteenth product page. grep -ril does not.
[ ] Capture a full-page, dated, URL-visible screenshot of every appearance at final rendered size, desktop and mobile, into the Phase 1 archive.
[ ] Add the non-trademark rights to the same register: photographs, illustrations, fonts, music, voices, faces, recognizable buildings, artwork, and anything an AI tool generated.
- Why. A campaign that reproduces a competitor's product photography has a copyright problem the trademark analysis will not catch. Run the copyright pass alongside Running a Fair Use Analysis and the Fair Use Risk Assessment Checklist; AI-assisted assets go through the Generative AI IP Compliance Checklist.
[ ] Flag every certification mark and collective mark on a separate tab.
- Authority. 15 U.S.C. § 1054; TMEP § 1306. Only a party the certifier has certified may display a certification mark, and misuse is a cancellation ground under 15 U.S.C. § 1064(5). See Certification and Collective Marks.
[ ] Flag every appearance where what shows is the owner's trade dress — housing shape, color, control layout — rather than its word mark.
- Why. A hero shot of the competitor's machine is a trade dress question with a functionality defense of its own; see Trade Dress and the Functionality Doctrine.

Kestrel's register. Thirty-four appearances, eleven third-party marks, seven channels: FERRA and the winged-F device; the model marks LINEA and DUETTO; MARLOWE (a second machine brand); GASKETRY (a competing aftermarket brand, in the comparison chart); AQUACERT (a water-contact certification mark); VIALE COFFEE BAR (a customer's signage, visible behind a testimonial); the name and likeness of Dani Ochoa, a regional barista champion; "Copper Line" by the Aster Drifts, under the video; a licensed stock photograph of a Ferra Linea; and the Amazon and Google marks in badge form. Four appearances were found only by the string sweep — all in alt text.

Phase 3 — Classify every use

[ ] Route each register row into one bucket and write it in the row: (a) descriptive/classic fair use, (b) nominative/referential, (c) first sale, (d) expressive or parodic, (e) no defense — remove, (f) not a trademark question at all.
[ ] Ask first whether the mark is being used as a source identifier for your own goods. If yes, stop; no fair use doctrine helps.
- Authority. Jack Daniel's Props., Inc. v. VIP Prods. LLC, 599 U.S. 140, 153–56 (2023).
- Trap. This is the line that kills clever creative. A competitor's mark styled into your own logo lockup is your brand, whatever the deck called it. Expressive uses belong in the Expressive Use and Parody Risk Checklist and, if litigated, in Litigating Expressive-Use Trademark Disputes.
[ ] Ask whether the use refers to their product (nominative) or describes yours (classic), and write one answer.
- Trap. Marking a row "both" means the row has not been analyzed. Plead in the alternative later if you must; classify in the singular now.
[ ] Route pure commentary, review, or criticism with no sale attached to a separate line: the claim may fail the "in connection with goods or services" element before any defense is reached.
- Authority. Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 676–80 (9th Cir. 2005); Radiance Found., Inc. v. NAACP, 786 F.3d 316, 322–29 (4th Cir. 2015).
[ ] Route resale of genuine articles to first sale and confirm there is no material difference — repackaging, removed codes, different warranty, different language.
- Authority. Sebastian Int'l, Inc. v. Longs Drug Stores Corp., 53 F.3d 1073, 1074–76 (9th Cir. 1995); Davidoff & CIE, S.A. v. PLD Int'l Corp., 263 F.3d 1297, 1302–03 (11th Cir. 2001); Beltronics USA, Inc. v. Midwest Inventory Distrib., LLC, 562 F.3d 1067 (10th Cir. 2009). Imports raise their own analysis; see Gray Market Goods and the Gray Market Enforcement Checklist.
[ ] Split every comparative row in two and track both: may we name them (trademark) and is what we said true (false advertising).
- Why. A defendant who wins nominative fair use and loses under 15 U.S.C. § 1125(a)(1)(B) has bought the worst available outcome.

| Kestrel use | Bucket | Day-one call | |---|---|---| | "Replacement group gasket — fits FERRA Linea and Duetto" (6 PDPs) | Nominative | Keep as written | | Winged-F device, video opening frame, 00:00–00:03 | None | Cut. Replace with plain-text FERRA | | "Kestrel vs. GASKETRY — 3x the service life" chart | Nominative + § 43(a)(1)(B) | Hold pending Phase 7 | | AQUACERT logo in the spec table | None | Remove. Kestrel is not certified | | VIALE COFFEE BAR signage behind testimonial | Nominative, incidental | Keep; obtain a location and signage release | | Dani Ochoa endorsement, video and email 3 | Right of publicity + § 1125(a)(1)(A) | Keep; written release plus paid-partnership disclosure | | "Copper Line" under the video | Copyright, two rights | Keep only with sync and master licenses in hand | | Stock photo of a Ferra Linea | Copyright licensed; trade dress shown | Keep; confirm license covers paid social | | ferraparts.kestrelparts.com landing page | Nominative, contested | Keep with identity banner above the fold | | Alt text ferra-linea-gasket-oem-replacement.jpg ×4 | Nominative | Keep; accurate and not stuffed | | Amazon title "FERRA Linea Group Gasket — Kestrel" | Nominative, weak | Reorder so KESTREL leads |

Phase 4 — Verify the facts the analysis depends on

[ ] Pull and save the current TSDR record for every third-party mark: status, registration number, identification of goods and services, disclaimers, any § 2(f) claim, the § 15 affidavit, the § 8 and § 9 history, and the owner's exact registered entity name for use in disclaimers.
- Why. A registration that is dead, that covers different goods, or that reached the Principal Register only through acquired distinctiveness changes the strength calculus and sometimes the whole answer.
- Trap. A disclaimed word inside a composite registration is not owned separately. Read the disclaimer before you concede anything. TMEP § 1213.
[ ] Check assignment records and TTABVUE for each mark, and note any pending opposition, cancellation, or recorded security interest.
[ ] Verify each compatibility statement against current engineering data, part number by part number, and record the verification date.
- Trap. "Fits all FERRA machines" is unverifiable the day the manufacturer ships a new model. Scope every compatibility claim to named models and a date range.
[ ] Confirm that any goods you resell are genuine and materially unchanged, and document the acquisition chain.
[ ] Confirm certification-mark eligibility with the certifier in writing, or remove the mark.
[ ] Confirm the license chain for every photograph, font, and music cue covers the media, territory, and term in the plan, including paid social and any post-campaign archive.
- Why. A sync license for a 45-second web video does not cover a broadcast cut-down, and two separate copyrights sit under every recorded song; see Two Copyrights, One Song, the Music Clearance Checklist, and Clearing a Track.
[ ] Obtain a signed release for every identifiable person and private location, with media, term, and territory matching the plan.
- Authority. State right-of-publicity statutes, e.g. Cal. Civ. Code § 3344; N.Y. Civ. Rights Law §§ 50–51; plus federal false endorsement under 15 U.S.C. § 1125(a)(1)(A). Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992). See Your Face Is Not Public Domain and the Name, Image, and Likeness Clearance Checklist.

Kestrel, Phase 4. TSDR shows FERRA registered in Classes 7 and 11 with no disclaimers, § 15 filed in 2023; LINEA registered but with "LINEA" disclaimed apart from the mark as shown, which is worth knowing before anyone worries about it. AQUACERT is a live certification mark; the certifier confirms Kestrel has no certificate. GASKETRY's registration is suspended on a § 2(d) refusal, which does not help Kestrel's advertising but does inform how hard Gasketry is likely to push.

Phase 5 — Apply the classic fair use test to descriptive uses

[ ] For each row bucketed "descriptive," rule separately on all three statutory elements and write a one-line finding for each.
- Authority. 15 U.S.C. § 1115(b)(4): use (1) otherwise than as a mark, (2) descriptively and only to describe the party's own goods, services, or their geographic origin, (3) fairly and in good faith. Kelly-Brown v. Winfrey, 717 F.3d 295, 308 (2d Cir. 2013).
[ ] Score "otherwise than as a mark" against the artifact, not the intention: point size relative to body copy, position relative to your house mark, sentence case versus display type, repetition across the campaign, and whether the phrase ever appears in a headline, logo lockup, or brand slot.
- Trap. Repetition across media converts description into branding. Twelve social posts using the phrase as a standalone hashtag is the Kelly-Brown fact pattern, 717 F.3d at 308–13.
[ ] Confirm the phrase carries no ™ or ® and appears in no style guide as a brand asset.
[ ] Search your own USPTO filings for the phrase before you certify anything.
- Why. You cannot verify to the USPTO that a phrase identifies your source and then tell a court it does not. An application for the disputed phrase is close to dispositive.
[ ] Collect five to fifteen dated examples of unrelated sellers using the same phrase descriptively, and file them.
- Authority. Third-party descriptive use is what carried the defendant in Sorensen v. WD-40 Co., 792 F.3d 712, 722–27 (7th Cir. 2015), and SportsFuel, Inc. v. PepsiCo, Inc., 932 F.3d 589, 598–601 (7th Cir. 2019).
[ ] Record, and do not overreact to, the things that do not defeat good faith: knowing about the plaintiff's mark, continuing to use the term after a demand, and not having consulted counsel first.
- Authority. SportsFuel, 932 F.3d at 600–01; Int'l Stamp Art, Inc. v. U.S. Postal Serv., 456 F.3d 1270, 1276 (11th Cir. 2006); Car-Freshner Corp. v. S.C. Johnson & Son, Inc., 70 F.3d 267, 270 (2d Cir. 1995).
[ ] Note on the file that the defense does not require you to disprove confusion, and do not build the record as though it did.
- Authority. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 118–22 (2004). Likely confusion returns only as one input into fairness. KP Permanent (on remand), 408 F.3d 596, 608–09 (9th Cir. 2005).
[ ] Grade the row green only if the use is single, subordinate, and in body copy; grade it amber if it is repeated or prominent; grade it red if it sits in a brand slot.

Phase 6 — Apply the nominative use test, in your circuit's version

[ ] Rule on necessity: could a reader identify the referenced product without the mark? Record the alternative you rejected and why.
- Authority. New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d 302, 308 (9th Cir. 1992).
[ ] Rule on minimal use: word mark in plain text, never the stylized device; no repetition beyond what the reference needs; no use of the owner's signature color, script, or packaging.
- Why. A logo is more of the mark than the name. Prong two asks how much you took.
- Trap. Decoration fails where reference passes. Tiled marks, watermark backgrounds, and mark-based iconography are decoration.
[ ] Rule on implied sponsorship: hunt for "authorized," "official," "certified," "genuine," "partner," and "dealer" across every asset, including alt text and ad copy.
- Authority. Brother Records, Inc. v. Jardine, 318 F.3d 900, 908 (9th Cir. 2003); Volkswagenwerk AG v. Church, 411 F.2d 350, 352 (9th Cir. 1969).
[ ] Apply the correct framework for the circuit recorded in Phase 1, and write the framework name on the audit page.

| Circuit | What you brief | Practical effect on the audit | |---|---|---| | 9th | New Kids three factors replace the confusion factors; plaintiff keeps the confusion burden | Green-light truthful references with clean presentation | | 3d | Trimmed Lapp confusion analysis, then the defendant proves fairness | Raise the presentation standard; add disclaimers earlier | | 2d | Polaroid factors plus three nominative considerations; no burden shift | Assume confusion evidence matters; keep survey money in reserve | | 5th | Ordinary confusion analysis plus two nominative requirements. Bd. of Supervisors LSU v. Smack Apparel Co., 550 F.3d 465, 488–89 (5th Cir. 2008) | Disclaimer adequacy carries more weight | | 6th | No separate doctrine. PACCAR Inc. v. TeleScan Techs., L.L.C., 319 F.3d 243, 256 (6th Cir. 2003) | Do not lead with New Kids; brief confusion | | 4th | Threshold "in connection with goods or services" plus First Amendment | Content and commentary uses are stronger; ads are not | | D.C. | Court must consider the New Kids factors. ASTM v. Public.Resource.Org, Inc., 896 F.3d 437, 456–57 (D.C. Cir. 2018) | Brief both frameworks in parallel |

[ ] Confirm that any remediation you propose is a presentation change, and note in the file that a court may trim a nominative use but may not enjoin the reference.
- Authority. Tabari, 610 F.3d at 1176; Champion Spark Plug Co. v. Sanders, 331 U.S. 125, 130 (1947); Swarovski AG v. Bldg. No. 19, Inc., 704 F.3d 44, 51–53 (1st Cir. 2013).

Phase 7 — Substantiate every comparative and objective claim

[ ] List every objective claim — express and implied — with the asset and the timecode or line number where it appears.
- Why. The FTC's rule is a reasonable basis for every objective claim at the time of dissemination, not at the time of challenge. Pfizer Inc., 81 F.T.C. 23 (1972).
[ ] Require head-to-head testing against the current version of the competitor's most similar product, by qualified persons, on an industry-standard protocol, significant at the 95% confidence level.
- Trap. Testing against a 2019 part when the OEM redesigned in 2024 fails three ways at once: wrong product, stale data, no disclosed protocol.
[ ] For unqualified superiority claims that name no competitor, obtain support against roughly 85% of the competitive field by unit share.
[ ] Treat any claim that announces its own support level — "tests prove," "clinical studies show" — as an establishment claim and hold the tests that establish it.
- Authority. Castrol Inc. v. Pennzoil Co., 987 F.2d 939, 946 (3d Cir. 1993).
[ ] Read the whole ad for messages nobody wrote, and kill any unstated implication that is untrue.
- Authority. Groupe SEB USA, Inc. v. Euro-Pro Operating LLC, 774 F.3d 192, 198–202 (3d Cir. 2014); Time Warner Cable, Inc. v. DIRECTV, Inc., 497 F.3d 144, 158 (2d Cir. 2007).
[ ] Keep subjective superlatives subjective and make quantified comparisons exact and qualified.
- Authority. Pizza Hut, Inc. v. Papa John's Int'l, Inc., 227 F.3d 489, 496–501 (5th Cir. 2000); August Storck K.G. v. Nabisco, Inc., 59 F.3d 616, 618 (7th Cir. 1995).
[ ] Reproduce the competitor's mark accurately and plainly identified as theirs — never redrawn, animated, degraded, or recolored.
- Authority. Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 44–45 (2d Cir. 1994).
[ ] Say once in the memo that naming the competitor is not the problem, so nobody relitigates it.
- Authority. Smith v. Chanel, Inc., 402 F.2d 562 (9th Cir. 1968); 15 U.S.C. § 1125(c)(3)(A)(i); 16 C.F.R. § 14.15.
[ ] Set a retest trigger: any competitor reformulation, model change, or price change invalidates the claim, and packaging claims are the hardest to withdraw.
[ ] Price the challenge you are inviting before you approve the chart.
- Why. A rival usually goes to the National Advertising Division of BBB National Programs before it goes to court: no discovery, decisions typically within 90 days and about 60 expedited, filing fees tiered by challenger revenue, referral to the FTC for non-compliance, and a five-figure NARB appeal fee — $20,000 under the schedule in place since 2018; confirm the current one. A Lanham Act claim is not precluded because another regulator polices the same label. POM Wonderful LLC v. Coca-Cola Co., 573 U.S. 102, 115–20 (2014). Standing runs on zone of interests and proximate cause, not competitive status. Lexmark Int'l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 129–34 (2014).

Kestrel, Phase 7. "3x the service life" rests on one bench test, one machine, one Gasketry part bought in 2024. Counsel kills the claim and the chart is rebuilt around a claim the data supports: "In our 500-hour bench test against Gasketry part no. G-220 (rev. 2026), Kestrel gaskets showed 2.1x median service life. Protocol at kestrelparts.com/testing." Substantiation moved from Phase 7 to Phase 1 for the next campaign.

Phase 8 — Remediate the creative

[ ] Issue redlines that state the element each change serves, so creative understands the constraint rather than fighting the edit.

| Do | Do not | Element it serves | |---|---|---| | Use the owner's word mark in plain text | Reproduce the logo, script, or stylized form | New Kids prong two | | Match the surrounding font, size, and color | Enlarge, embolden, or use the brand's signature color | Prong two; "as a mark" | | Reference once per screen | Repeat across headers, footers, and every tile | Kelly-Brown, 717 F.3d at 309–10 | | Put your house mark first and largest | Let the third-party mark lead a title | "Otherwise than as a mark" | | "Compatible with," "fits," "for use in" | "Authorized," "official," "certified," "genuine" | Prong three | | Use ® or ™ on your marks only | Mark the descriptive phrase you are defending | Good faith | | Keep the reference in body copy | Put it in a domain, handle, or hashtag | Kelly-Brown; prong two |

[ ] Rewrite every compatibility string to the approved formulations and hand marketing the exact text.
- Safe: "Replacement group gasket — fits FERRA Linea and Duetto machines (2018–present)." Risky: "FERRA-compatible gasket." Never: "Official FERRA replacement part."
[ ] Draft one disclaimer, and make it clear, conspicuous, and proximate: same visual field as the reference, type no smaller than the reference, plain English, never behind a hover or an accordion, repeated on every page where the reference appears, and verified on mobile.
- Why. A disclaimer is not a cure and Tabari declined to require one as the price of truthful speech, 610 F.3d at 1176–77. A good one still materially improves prong three.
- Model: "Kestrel Parts Co. is an independent supplier of aftermarket parts. FERRA is a registered trademark of Ferra Macchina S.p.A. Kestrel is not affiliated with, sponsored by, endorsed by, or authorized by Ferra Macchina S.p.A."
[ ] Delete, do not shrink, anything graded red in Phases 5 and 6.
[ ] Re-render every changed asset, re-screenshot at final size, and update the register rows rather than starting a new sheet.
- Trap. An audit that ends with a memo but not a re-verified register has cleared a campaign that no longer exists.

Phase 9 — Clear the channel surfaces

[ ] Export the Google Ads account — campaigns, ad groups, keywords, ad copy, change history — and confirm no competitor mark appears in any headline or display URL.
- Authority. Buying a mark as a keyword is a use in commerce, so the question is confusion, not use. Rescuecom Corp. v. Google, Inc., 562 F.3d 123, 127–31 (2d Cir. 2009); Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1148–54 (9th Cir. 2011); 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229, 1243–46 (10th Cir. 2013). The doctrine is traced in Buying a Competitor's Name; the program design is in Running a Keyword and Paid-Search Trademark Program and the Keyword Advertising Compliance and Enforcement Checklist.
[ ] Disable dynamic keyword insertion on any campaign containing competitor terms; add negative keywords for "authorized," "official," "dealer," and "warranty"; and confirm the landing page identifies you above the fold with the disclaimer visible without scrolling.
- Trap. "The tool put the mark in the headline" is not a defense; it is an admission that nobody was watching.
[ ] Reorder every marketplace listing title so your house mark leads, and check the platform's own brand-name policy, which is stricter and faster than the law.
- Why. A marketplace can suspend a listing in days on a complaint that would lose in court. Platform mechanics are in the Online Brand Protection Toolkit.
[ ] Review every domain and subdomain containing a third-party mark against both the fair use analysis and the ACPA's bad-faith factors.
- Authority. 15 U.S.C. § 1125(d); Tabari, 610 F.3d at 1178–79. See Cybersquatting and the ACPA and UDRP vs. Federal Lawsuit.
[ ] Retire any social handle, hashtag, or bio line built on a third-party mark and replace it with a tag built on your own.
[ ] Confirm every endorsement, testimonial, and influencer post carries a clear and conspicuous material-connection disclosure.
- Authority. FTC Endorsement Guides, 16 C.F.R. pt. 255 (as revised in 2023).
[ ] Submit broadcast and print creative to the network continuity and publisher standards desks on their own lead times, comparative spots first.
- Why. A challenge to a media outlet can pull an ad in days at a fraction of the cost of a TRO, and many outlets suspend review once litigation or an NAD case is pending.
[ ] Pull the agency master services agreement and confirm who warrants cleared assets and who warrants product-claim substantiation.
- Authority. 15 U.S.C. § 1114(2)(B) limits an innocent publisher's or printer's exposure to injunctive relief as to future issues. Raise it early; it changes settlement immediately.
[ ] Confirm no attribution or origin claim about creative content is being made that trademark law will not carry.
- Authority. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 37 (2003).

Phase 10 — Document good faith and freeze the record

[ ] Write the adoption memo the day the decision is made, dated the day it is made, covering: the attribute described, at least five alternatives considered with reasons for rejection, third-party descriptive use, the placement rules adopted, and an express statement that the company claims no rights in the term.
- Trap. Reconstruct honestly if you must, dated today and citing the real artifacts. Never backdate. A truthful reconstruction is evidence; a backdated memo is a case-ending exhibit.
[ ] File the alternatives list, the creative brief specifying subordinate placement, and the approval-workflow records from the ticketing system.
- Authority. The "why this word" question is EMI Catalogue P'ship v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 66–67 (2d Cir. 2000).
[ ] File the clearance search and any opinion, and decide the privilege fork now: relying on advice of counsel later waives privilege over the advice and usually over related communications on the same subject.
- Why. The good-faith file does double duty — it decides the third element and it cuts off the largest money exposure, because mental state remains "a highly important consideration" on an accounting of profits. Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 212, 218 (2020); 15 U.S.C. § 1117(a). See What a Trademark Win Is Worth.
[ ] Archive every asset as published, with URL and date, plus the ad account export and the marketplace listings in their live state.
[ ] Buy and seal two units of any physical product whose packaging carries a disputed phrase.
[ ] Record the substantiation package as a signed, dated document owned by product or engineering, not by marketing.
[ ] Tender any demand received during the campaign to every carrier on risk when the conduct began, on the demand letter and not on the complaint.

Phase 11 — Escalate, sign off, and set the re-audit trigger

[ ] Grade every register row green, amber, or red, and require a named decision-maker at each grade: green — counsel signs; amber — GC or head of legal signs, with the mitigation recorded; red — remove, or obtain a written business-risk acceptance from an officer.
[ ] Escalate to outside counsel any row that involves a famous mark, a certification mark, a competitor with a live enforcement program, a claim of superiority, or a use the client refuses to change.
- Why. Dilution has its own exclusions and its own fame threshold, and the exclusions do not apply where the use is a designation of source for your own goods. 15 U.S.C. § 1125(c)(3); see Trademark Dilution Under the TDRA.
[ ] Issue a sign-off memo containing: audit ID, scope, the register with grades, the framework applied, the substantiation package reference, unresolved items with named owners, and the re-audit triggers.
[ ] Set the re-audit triggers in writing: any competitor product change, any new channel, any creative revision touching a flagged row, any new market or country, and calendar the review at 90 days post-launch.
[ ] Stand up monitoring for complaints against you and for uses of your own marks, and keep the two programs separate.
- Why. An over-aggressive enforcement program against truthful referential use manufactures precedent against your own brand. See Trademark Watch Services, the Brand Enforcement Toolkit, and the Pre-Litigation Enforcement Checklist.
[ ] Publish the 48-hour demand-letter runbook to the business now, while nothing is on fire: forward to counsel, change nothing, delete nothing, screenshot before any business-driven change, and do not reply personally.
- Why. The first 48 hours after a demand determine the shape of the defense. Responding to a Cease-and-Desist Letter is the sequence; Sending an Effective Cease-and-Desist Letter is what the other side was supposed to have done.
[ ] Keep a coexistence agreement on the shelf as the settlement instrument of choice, because what you usually want is a written rule about presentation, not a license with quality-control obligations.
- See the Trademark Coexistence Agreement Template.

Common Mistakes

Auditing marks instead of appearances. One mark can be fair in body copy and indefensible in a header. Row-per-appearance, or the audit is decorative.

Letting the client take everything down. Removing the good uses with the bad destroys the evidence that your presentation was modest, and reads later as an admission. Remove only what has no defense, and memorialize why.

Treating a disclaimer as a fix. It improves prong three. It does not rescue a stylized logo in your header, and adding one can concede the underlying use was misleading.

Running substantiation after creative. Testing is the gate that kills the most campaigns, and it has to come before concepting.

Filing a trademark application for the phrase you are defending as descriptive. Usually through an outside filing agent nobody told legal about. Search your own filings in Phase 5.

Assuming New Kids is the law where you are. It is not the law in the Fourth or Sixth Circuits and means different things in the Second, Third, and Ninth. Briefing a test as binding when it is not costs credibility you will want later.

Forgetting alt text, schema markup, and file names. The string sweep exists for this reason.

Winning the trademark question and losing the truth question. Naming a competitor is protected; lying about one is a separate tort under 15 U.S.C. § 1125(a)(1)(B), and no fair use doctrine answers it.

Auditing once. A comparative claim that was accurate at launch becomes false the day the competitor reformulates.

Deadlines at a Glance

| Clock | Length | Source | |---|---|---| | Substantiation testing complete | Concept lock − 40 business days | Practice standard; FTC requires the basis at dissemination | | Audit complete | Concept lock − 20 business days | Practice standard | | Network / publisher clearance submission | Per outlet, typically 10–20 business days | Media outlet advertising standards | | Insurance notice after a demand | "As soon as practicable" — treat as 5 days | CGL Coverage B notice provision | | Answer after service of a complaint | 21 days | Fed. R. Civ. P. 12(a)(1)(A)(i) | | Answer if service is waived | 60 days from the request | Fed. R. Civ. P. 4(d)(3) | | Ex parte TRO duration | 14 days, extendable for good cause | Fed. R. Civ. P. 65(b)(2) | | Amendment of a pleading as of right | 21 days after a responsive pleading or Rule 12 motion | Fed. R. Civ. P. 15(a)(1)(B) | | Expert disclosures absent a court order | 90 days before trial | Fed. R. Civ. P. 26(a)(2)(D) | | DMCA counter-notice restoration window | Not less than 10 nor more than 14 business days | 17 U.S.C. § 512(g)(2)(B)–(C) | | NAD decision | ~90 days; ~60 days expedited | BBB National Programs procedures | | Post-launch review | 90 days after launch | Practice standard |