Raising a Trademark Fair Use Defense: A Practitioner's Guide to Classic Fair Use, Nominative Use, and Comparative Advertising
By Casey Scott McKay ·
This guide is the execution manual for a trademark fair use defense, from the hour the demand letter arrives to the verdict form. It works through twelve numbered stages — triage and doctrine selection, preservation and insurance tender, building the good-faith file, answering a demand aimed at referential use, the declaratory-judgment forum fork, pleading fair use under Fed. R. Civ. P. 8(c), targeted discovery, summary judgment framed circuit by circuit, jury instructions and remedy scope, monetary exposure, the prophylactic advertising review workflow, and what to do when a campaign is already in market — each with the governing rule, a realistic timeline and cost, and the trap that costs money. It supplies model affirmative-defense paragraphs, a demand-response letter, a litigation-hold memo, compatibility and disclaimer language a marketing team can copy, 30(b)(6) topics, and proposed jury instructions, all carried through two annotated worked examples: a cold-brew roaster defending a descriptive phrase and an aftermarket parts seller defending referential use, a comparison chart, a logo, and a keyword buy. It maps summary judgment posture across the Second, Third, Fifth, Sixth, Seventh, Ninth, Eleventh, and D.C. Circuits, prices each phase of the fight, and treats the § 43(a)(1)(B) false-advertising counterclaim as the real risk in comparative advertising rather than a footnote. The doctrine lives in the companion article; this document assumes it and spends its length on what to file, what to say, what to preserve, and when.
IP and Technology > Trademarks | Guide | Published 8 April 2024 - Updated 18 July 2026 | Casey Scott McKay - marksy.us
Summary. This is the working manual for defending a use of someone else's trademark, organized as twelve stages from the arrival of the demand letter to the verdict form. Each stage gives the move, the governing rule, a realistic timeline and cost, and the trap: triage and doctrine selection, preservation and insurance tender, the good-faith file, the demand response, the declaratory-judgment forum fork, pleading under Fed. R. Civ. P. 8(c), targeted discovery, summary judgment framed circuit by circuit, jury instructions and the remedy fight, monetary exposure, a prophylactic advertising review workflow for marketing teams, and salvage operations when the campaign is already in market. It includes model affirmative-defense paragraphs, a demand-response letter, a hold memo, compatibility and disclaimer language, 30(b)(6) topics, and proposed instructions — all applied to two examples carried end to end. The doctrine is in the companion article; this guide operationalizes it.
Keywords: fair use defense · 15 u.s.c. 1115(b)(4) · affirmative defense pleading · rule 8(c) · nominative fair use · classic fair use · comparative advertising review · false advertising counterclaim · section 43(a)(1)(b) · summary judgment by circuit · fair use jury instructions · cease and desist response · declaratory judgment action · keyword advertising · metatags · good faith record · disclaimer drafting · compatible with claims · litigation hold · trademark litigation budget
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