Litigating Expressive-Use Trademark Disputes: A Practitioner's Guide After Jack Daniel's v. VIP Products
By Casey Scott McKay ·
This guide is the operational companion to Marksy's doctrinal article on Rogers and Jack Daniel's, and it assumes that doctrine rather than repeating it. It walks a lawyer through an expressive-use trademark dispute in fourteen numbered stages, from the first-hour source-identifier screen through pre-suit correspondence, forum selection, pleading, Rule 12(b)(6) practice, state anti-SLAPP motions, the preliminary injunction fight, discovery, survey design, the dilution exclusions, trial, and settlement. Each stage sets out what you are doing, the governing rule or statute, realistic time and cost, and the mistake that costs money. It supplies model language a practitioner can adapt for demand letters, answers, deposition notices, survey controls, jury instructions, disclaimers, and sunset provisions, plus decision trees for the forks that recur and a cost-and-timeline table for the full litigation arc. It closes with pre-launch counseling: a four-tier risk matrix for creative projects, advice for merch sellers and platforms, and five settlement postures with what each one buys. The worked example from the companion article, a two-person animation studio in Providence, is carried through every stage.
IP and Technology > Trademarks | Guide | Published 17 November 2023 - Updated 19 December 2025 | Casey Scott McKay - marksy.us
Summary. This is the operational companion to Marksy's doctrinal article on Rogers and Jack Daniel's, and it assumes that doctrine rather than repeating it. It walks a lawyer through an expressive-use trademark dispute in fourteen numbered stages: the first-hour source-identifier screen, pre-suit correspondence, forum selection, pleading, Rule 12(b)(6) practice, state anti-SLAPP motions, the preliminary injunction fight, discovery, survey design, the dilution exclusions, trial, and settlement. Each stage gives you what you are doing, the governing rule, realistic time and cost, and the mistake that costs money. It supplies model language for demand letters, answers, deposition notices, survey controls, jury instructions, disclaimers, and sunset provisions, plus decision trees for the forks that recur and a cost-and-timeline table for the whole arc. It ends with pre-launch counseling: a four-tier risk matrix, advice for merch sellers and platforms, and five settlement postures with what each one buys. The worked example from the companion article — a two-person animation studio in Providence — is carried through every stage.
Keywords: expressive use litigation · source-identifying use · rogers test procedure · jack daniel's v. vip products · parody defense strategy · anti-slapp special motion to strike · rule 12(b)(6) trademark · declaratory judgment trademark · dilution exclusions 1125(c)(3) · parody survey design · survey control cell · preliminary injunction bond · rule 30(b)(6) topics · trademark disclaimers · print-on-demand liability · risk tiering creative projects · coexistence settlement · exceptional case attorney fees
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