The First Amendment and Trademark Toolkit: Expressive Use, Content Bars, and Speech-Adjacent Enforcement

By Casey Scott McKay · 2024-05-25

Trademark law regulates words, and words are speech - which is why the First Amendment runs through this field in three separate places that practitioners routinely conflate. This toolkit separates them: the content-based registration bars struck down as viewpoint discrimination and the bars that survived, the expressive-use defense that shields creative works and the recent narrowing that returned source-identifying use to the ordinary confusion analysis, and the speech-adjacent enforcement decisions where a demand letter against a critic or an artist creates more harm than the use ever did. It explains where each doctrine begins and ends, what evidence matters, and how to counsel a brand owner who wants something taken down that the law protects. It covers the defensive posture in equal depth. It closes with a cost map, an authorities table, and the forms that paper each step.

IP and Technology > Trademarks | Toolkit | Published 25 May 2024 - Updated 18 March 2026 | Casey Scott McKay - marksy.us

Summary. Trademark law regulates words, and words are speech — which is why the First Amendment runs through this field in three separate places that practitioners routinely conflate. This toolkit separates them: the content-based registration bars struck down as viewpoint discrimination and the bars that survived, the expressive-use defense that shields creative works and the recent narrowing that returned source-identifying use to the ordinary confusion analysis, and the speech-adjacent enforcement decisions where a demand letter against a critic or an artist creates more harm than the use ever did. It explains where each doctrine begins and ends, what evidence matters, and how to counsel a brand owner who wants something taken down that the law protects. It covers the defensive posture in equal depth. It closes with a cost map, an authorities table, and the forms that paper each step.

Keywords: rogers test · expressive use · jack daniels · parody · source-identifying use · disparagement clause · scandalous marks · viewpoint discrimination · section 2(a) · section 2(c) · false connection · criticism sites · gripe sites · noncommercial use · dilution exclusions · commercial speech · artistic relevance · explicitly misleading · content-based bars · speech-adjacent enforcement

Start Here

A brand owner calls with four things she wants taken down.

A novel whose title incorporates her company's mark, used as a metaphor for corporate excess.

A parody product — a squeaky toy shaped like her flagship package, with the label altered into a joke.

A criticism site at a domain combining her mark with an unflattering word, cataloguing customer complaints.

And an application somebody filed for a mark that is a crude insult, in her category, apparently to annoy her.

Four requests. The correct answers are: probably not, probably yes, almost certainly not, and probably not on the ground she assumes — and each rests on a different doctrine.

The pattern worth naming immediately. Brand owners experience all four as the same problem: someone is using our name in a way we do not like. The law treats them as four separate questions with four different frameworks, and the most common malpractice in this area is applying the wrong one — usually by assuming the expressive-use defense is either absolute or nonexistent.

This toolkit answers three questions.

Which of the three First Amendment intersections is this? Registration bars, expressive use, or enforcement against speech.
Where exactly does each doctrine begin and end? Because the boundaries moved recently and in a specific direction.
What should you advise a brand owner who wants something down that the law protects? Which is, in this practice, the most valuable counseling you will do.

If you read only one thing, read Rogers, Jack Daniel's, and the Trademark Parody Problem. It explains the line between expressive use and source-identifying use, which now decides nearly every dispute in this area.

Part One: The Registration Bars

The first intersection is about what the government may refuse to register.

The framework. Refusing registration is government action. Where a refusal turns on the viewpoint or the offensiveness of the message, it faces serious constitutional problems. Where it turns on something other than the message — a factual relationship, a name, a source of confusion — it generally does not.

What fell. The bar on disparaging marks was held unconstitutional as viewpoint discrimination: the government may not refuse registration because a mark gives offense to a group. The bar on immoral or scandalous marks fell on related grounds, as a viewpoint-based distinction between marks society approves and disapproves.

What survives. 15 U.S.C. § 1052(a) still bars deceptive matter and marks falsely suggesting a connection with persons, institutions, beliefs, or national symbols — bars that turn on falsity and relationship rather than on viewpoint. And 15 U.S.C. § 1052(c) still bars registration of a name, portrait, or signature identifying a particular living individual without written consent, a provision upheld as a content-based but viewpoint-neutral condition on a government benefit.

The distinction to hold onto. Viewpoint-based refusals fail. Content-based but viewpoint-neutral conditions on the registration benefit have generally survived, because registration is a benefit rather than a restriction on speech — nobody is prohibited from using an unregistrable mark.

The practical consequence. A mark that offends may be registered. A mark that falsely claims a connection may not. And a mark using a living person's name requires their consent, however the applicant feels about them.

See The Section 2 Bars; Overcoming a False Connection, Insignia, or Name Refusal; Content-Based Section 2 Refusal Checklist.

Part Two: Expressive Use, and Where It Stops

The second intersection is about infringement claims against creative works, and it is where the law moved most recently.

The framework that developed. For expressive works, courts asked whether the use of a mark had any artistic relevance to the underlying work and, if so, whether it explicitly misled as to source. That approach kept trademark law out of titles, characters, dialogue, settings, and depictions — because applying an ordinary confusion analysis to every mark appearing in a novel or a film would make expressive work impossible.

The narrowing. The Supreme Court held that the framework does not apply when the challenged use is as a designation of source for the defendant's own goods. Where the defendant uses the mark to brand what it is selling, the ordinary likelihood-of-confusion analysis governs, expressive content notwithstanding.

Parody is not an exemption. Parody remains relevant — it bears on the confusion analysis and it is expressly relevant to dilution — but it is a consideration within the analysis rather than a threshold bar to it.

The line, applied.

Protected as expressive use: a mark appearing in a title as commentary; a real brand depicted in a film's environment; a character who uses a real product; a song referencing a brand; a novel using a mark metaphorically; a work of visual art incorporating a logo as subject matter.
Subject to ordinary confusion analysis: a branded product sold as merchandise; a mark used on packaging for the defendant's own goods; a parody product where the parody mark identifies the source of the item being sold; a collection whose name is the plaintiff's mark.

The practical effect on litigation. The defense that used to resolve these cases at the threshold frequently does not now, which means the analysis proceeds to a full confusion inquiry with its attendant cost and uncertainty. That has shifted settlement dynamics toward brand owners, and it means a creative defendant can no longer assume an early exit.

The dilution overlay. 15 U.S.C. § 1125(c) provides a claim for famous marks with statutory exclusions for noncommercial use, news reporting and commentary, and certain fair uses including parody, criticism, and comment — but the parody exclusion does not apply where the mark is used as a designation of source for the defendant's own goods. The same line, in a second doctrine.

See Rogers, Jack Daniel's, and the Trademark Parody Problem; Litigating Expressive Use Trademark Disputes; Expressive Use and Parody Risk Checklist.

Part Two-and-a-half: Applying the Source-Use Test in Practice

The whole area now turns on one question — is the mark being used to designate the source of the defendant's own goods? — so it is worth a working method rather than an intuition.

Ask where the mark appears. The surfaces divide cleanly. Inside the work — in dialogue, in an image, in a scene, in a lyric, as a metaphor — is expressive territory. On the packaging, on the label, in the storefront listing, in the product name, in the app store title, or as the collection's own identifier is source territory. The same mark can be protected in one place and actionable in another within a single project.

Ask what the consumer is buying. If the buyer is buying an expressive work that happens to contain the mark, the use is expressive. If the buyer is buying an item branded with the mark, the mark is doing source work regardless of how funny the item is.

Ask whether the defendant is competing. A creative work about a brand does not compete with the brand. A product bearing a version of the brand, sold in the same channel, does.

Ask whether the mark is being used to sell the mark. A parody that only works because the consumer recognizes the brand, sold on an item whose appeal is the brand recognition, is close to source use even when nobody would think the brand owner made it.

Ask what the promotional materials say. A work whose marketing leads with the mark is harder to characterize as merely containing it. Advertising copy has decided several of these cases.

Then, if it is expressive territory: artistic relevance is a low bar, and "explicitly misleading" requires more than a possibility of confusion — an overt claim of endorsement or origin. Most expressive uses clear both.

And if it is source territory: run the ordinary confusion factors, with parody as a consideration within them. Strength of the mark, similarity, proximity of goods, evidence of actual confusion, the defendant's intent, and the sophistication of the purchasers. Parody cuts both ways here: it can reduce confusion by signaling that the defendant is not the brand owner, and it can increase the association that a dilution claim rests on.

The counseling shorthand for a client. They may write about you, film you, sing about you, draw you, and joke about you. They may not sell a product branded with your mark. That sentence is not the whole law, and it gets the answer right in most calls.

Part Three: Enforcement Against Speech

The third intersection is not doctrinal at all. It is about what happens when a brand owner sends a demand letter to a speaker.

The recurring targets. Critics and complaint sites. Parody accounts. Journalists and reviewers. Artists. Employees and former employees speaking publicly. Consumer advocates. Academic and educational users.

Why the letters usually fail on the merits. Noncommercial criticism does not generally cause confusion as to source, 15 U.S.C. § 1125(c)(3) excludes noncommercial use and news commentary from dilution, and nominative use permits referring to a brand accurately in order to discuss it. A gripe site at a domain combining the mark with a pejorative is, in most formulations, neither confusing nor bad-faith registration under 15 U.S.C. § 1125(d).

Why they fail even when they might succeed. The letter becomes the story. A demand against a critic, an artist, or a small creator reliably produces coverage in which the brand is the antagonist and the recipient is sympathetic. The use complained of typically reached a few hundred people; the coverage reaches millions. This is the single most reliable pattern in this area and the most valuable thing a lawyer can explain to a client.

Anti-SLAPP exposure. Many states have statutes providing early dismissal and mandatory fee-shifting for claims targeting protected speech on matters of public concern. A weak trademark claim against a critic can end with the brand owner paying the critic's fees.

Misrepresentation exposure. Where the vehicle is a copyright takedown, 17 U.S.C. § 512(f) penalizes knowing material misrepresentation, and considering fair use in good faith is a precondition to sending a notice at all.

The counseling framework. Before any communication, ask four questions. Is the use commercial or expressive? Is the mark being used to identify the speaker's own goods, or to refer to yours? Would a reasonable consumer be confused about source? And what would a reporter write about this letter? A use that is expressive, referential, non-confusing, and sympathetic should almost never draw a demand.

And the alternatives that work better. Engage the substance of a legitimate complaint. Respond publicly where the criticism is unfair. Register the obvious pejorative domains defensively before someone else does. Improve the underlying problem. Do nothing, which is frequently correct and is the hardest advice to give.

Part Three-and-a-half: The Anatomy of a Bad Demand Letter

Because this is where the real damage happens, it is worth cataloguing the failure modes precisely.

It overstates the claim. Asserting infringement, dilution, and cybersquatting against a critic with a blog invites the recipient's lawyer to explain, publicly, why each fails.

It threatens what will not be done. A demand for statutory damages and fees against an individual who plainly cannot pay reads as intimidation, because it is.

It ignores the statutory exclusions. 15 U.S.C. § 1125(c)(3) excludes noncommercial use, news reporting, and commentary from dilution. A letter asserting dilution against commentary has cited a statute that says the opposite.

It targets the wrong thing. The complaint is usually about the message rather than about confusion, and a letter that reveals that — by objecting to the criticism rather than to any source-identifying use — has documented the brand's actual motive.

It sets a short deadline with a threat attached, which converts a recipient who might have quietly complied into one who consults counsel and then a reporter.

It goes to the platform instead of the person, using a takedown mechanism as a shortcut. Where the vehicle is a copyright notice, 17 U.S.C. § 512(f) attaches liability for a knowing material misrepresentation, and considering fair use in good faith is a precondition.

And it is written as though nobody will read it but the recipient. In this area, assume publication. Every letter in this category should be drafted to survive being screenshotted in full.

What a good letter looks like when one is warranted. Short. Specific about the commercial use, not the expression. Silent about the message. Proposing a concrete fix — remove the mark from the packaging, change the storefront title, add a disclaimer — rather than demanding total cessation. Professional in tone toward a recipient with far fewer resources. And offering a contact rather than a portal.

Part Four: Where the Doctrines Meet the Everyday

Comparative advertising. Truthful comparative use of a competitor's mark is lawful; the fight is about falsity rather than confusion, which routes it to the false advertising analysis. See Advertising and Marketing Law Toolkit.

Nominative use. Referring to a brand to discuss, compare, review, or describe compatibility. Courts ask whether the product is readily identifiable without the mark, whether only so much was used as necessary, and whether anything suggested sponsorship. See Descriptive and Nominative Fair Use; Raising a Trademark Fair Use Defense.

Keyword advertising. Buying a competitor's mark as a keyword is generally lawful; the dispute is about the ad copy and the landing page. See Buying a Competitor's Name.

Merchandise bearing a message. A slogan on a shirt is frequently ornamental rather than source-identifying — a failure-to-function problem rather than a First Amendment one, though the two are often argued together. See Failure to Function; Overcoming an Ornamentality or Failure-to-Function Refusal.

Virtual goods and games. Depiction as environment is expressive; a branded item sold as a product is source use. The distinction has become the central question in that category. See Trademarks in Virtual Worlds; Virtual Goods and Digital Brand Toolkit.

Real people in creative work. The right of publicity operates alongside trademark with its own First Amendment accommodations, varying by state. See Your Face Is Not Public Domain; Right of Publicity and Personal Brand Toolkit.

Part Five: Advising the Creative Side

Clear before you ship. The analysis is cheap in advance and expensive afterward, and the outcome frequently turns on choices that are free to make early — how the mark appears, whether it is on the packaging, whether it is in the title, whether it is in the storefront listing.

Keep the mark off the source-identifying surfaces. Titles, packaging, storefront names, and promotional copy are where source use is found. The same content that is protected inside a work becomes vulnerable on its cover.

Document the creative rationale contemporaneously. Artistic relevance is far easier to establish from a design document written during development than from testimony written after a complaint.

Make the parody land. A parody that is not recognizable as a parody is just a copy. The clearer the joke, the stronger the position on confusion.

Avoid the merchandising slide. A protected creative use frequently becomes a merchandising program, and the merchandising is where the claim arises.

Add a disclaimer, knowing its limits. Disclaimers help at the margins and do not rescue an otherwise confusing use.

And assess the cost of being right. The narrowing of the threshold defense means a creative defendant may have to litigate to judgment to win, and winning at that price is frequently indistinguishable from losing. See Fair Use Risk Assessment Checklist; Trademark Defenses Toolkit.

Part Six: Cost Map

| Item | Relative cost | Notes | |---|---|---| | Pre-publication expressive-use review | Low | The highest-return step by far | | Counseling memo on a demand decision | Low | Frequently prevents the expensive path | | Defensive registration of pejorative domains | Low, recurring | Cheaper than any dispute | | Demand letter to a speaker | Low to send, very high in consequence | Rarely worth it | | Defending an expressive-use case to judgment | Very high | And now more likely to be necessary | | Anti-SLAPP motion, defending | Moderate | With fee recovery where it applies | | Anti-SLAPP exposure, as plaintiff | High | Mandatory fees in many states | | Section 2 refusal response | Low to moderate | Consent is usually the fastest route |

The ratio. The counseling conversation costs an hour and is the single highest-value work in this area, because the decision not to send a letter is frequently worth more than any letter could achieve.

Part Seven: What Happened to the Four Requests

The novel. Not pursued. The mark appeared in the title as commentary, it was artistically relevant, nothing about the presentation suggested the company published or endorsed the book, and the use was not a designation of source for the author's goods in the relevant sense. Counsel's memo said so plainly, and the client accepted it — helped considerably by the observation that a lawsuit would sell more copies than the publisher's marketing budget could.

The parody product. Pursued, and correctly. The parody mark appeared on the product's own packaging, identifying the source of the item being sold, which put it squarely within the ordinary confusion analysis rather than behind a threshold defense. The parody remained relevant to confusion, and the matter settled with a redesign that kept the joke and removed the elements imitating the trade dress.

The criticism site. Not pursued, over the client's initial objection. Noncommercial criticism, no plausible source confusion, dilution excluded by statute, and an anti-SLAPP statute in the relevant state with mandatory fee-shifting. Counsel's advice was to address the underlying complaints, which were substantially accurate. The company also registered a handful of pejorative domain variants defensively, which cost very little and closed the easiest remaining vector.

The insulting application. The client's assumption was that it would be refused as scandalous. It would not be — that bar no longer stands. It was opposed instead on likelihood of confusion under 15 U.S.C. § 1052(d), which was the actual ground available, and the opposition succeeded. Using the right doctrine mattered; using the one the client expected would have failed.

Part Eight: The Broader Frame

Two structural points are worth holding, because they explain why this area behaves the way it does.

Trademark law is not a general right against being talked about. It exists to protect consumers from confusion about source and to protect the investment a producer makes in a source indicator. Nothing in 15 U.S.C. § 1127 or in the infringement provisions grants a right to control how a brand is discussed, depicted, criticized, or joked about. Clients arrive believing otherwise, and the belief is not unreasonable — the mark feels like property, and property feels like control — but it is the source of most of the bad decisions in this practice. The conversation that reframes trademark as a consumer-protection doctrine with a producer beneficiary, rather than as ownership of a word, prevents more damage than any doctrinal briefing.

Registration is a benefit, not a permission. The content bars in 15 U.S.C. § 1052(a) and 15 U.S.C. § 1052(c) determine what the government will put on a register; they do not determine what anyone may say or sell. A refused application is not a prohibition, which is precisely why viewpoint-neutral conditions on the benefit have survived while viewpoint-based ones have not. Practitioners occasionally advise as though a refusal settles a use question, and it does not — the applicant may use the unregistrable mark and may build common law rights in it. See Establishing and Proving Common Law Trademark Rights.

A third point, about direction. The recent movement in this area has been toward brand owners on the expressive-use question and away from the government on the registration bars — which is not a contradiction, because they are different doctrines answering different questions. A practitioner who describes the landscape as uniformly speech-protective or uniformly brand-protective has flattened two independent trends into one story and will give wrong advice in at least one of them.

And a note on documentation. Because the boundaries here have moved and will move again, opinions in this area should be dated, should state the authorities as of that date, and should be revisited before being relied on for a new matter. A memo written before the narrowing of the threshold defense describes a landscape that no longer exists, and reusing it is the most likely way to get this wrong.

Part Nine: The Client Conversation That Matters

Nearly every engagement in this area comes down to one meeting, and it goes better with a structure.

Start by separating the feeling from the claim. The client is upset, and the upset is legitimate — somebody has used their name in a way they find unfair, mocking, or damaging. Acknowledge it, and then say plainly that the question the law asks is narrower: would a consumer be confused about who made this, and is the mark being used to brand the other party's goods.

Show the four surfaces. Where the mark appears determines the answer, and clients understand a visual explanation faster than a doctrinal one. Inside the work: protected. On the packaging: not.

Name the downside honestly. A demand letter against a sympathetic speaker produces coverage. Anti-SLAPP statutes in many states shift fees. And a public loss on an expressive-use question becomes a citation other people use against the same brand later.

Offer the alternatives, in order. Do nothing. Address the underlying complaint. Respond publicly. Register the defensive variants. License the use you actually like. Send a narrow letter about the commercial surface only. Litigate.

Ask what outcome they actually want, and test it against what each route delivers. "I want it gone" is rarely achievable against protected speech and frequently achievable against a merchandising program — and distinguishing those two is the entire value of the meeting.

Then write it down. A short memo recording the analysis and the client's decision protects everyone, and it is the document that prevents the same conversation from recurring every quarter when a new example surfaces.

A Suggested Reading Path

If you have a specific problem right now, branch:

A creative work uses your mark. Rogers, Jack Daniel's, and the Trademark Parody Problem → Litigating Expressive Use Trademark Disputes → Expressive Use and Parody Risk Checklist.
You want to use someone else's mark in a work. Descriptive and Nominative Fair Use → Fair Use Risk Assessment Checklist → Fair Use and Permissions Toolkit.
A Section 2 refusal. The Section 2 Bars → Overcoming a False Connection, Insignia, or Name Refusal → Content-Based Section 2 Refusal Checklist.
A critic or a gripe site. Trademark Defenses Toolkit → Domain Name and Digital Identity Toolkit.
Virtual goods or games. Trademarks in Virtual Worlds → Virtual Goods and Digital Brand Toolkit.

If you are building the practice from nothing, read in this order:

Rogers, Jack Daniel's, and the Trademark Parody Problem — the line that decides everything.
The Section 2 Bars — what survived and what fell.
Descriptive and Nominative Fair Use — the everyday defenses.
Litigating Expressive Use Trademark Disputes — the litigation posture.
Failure to Function — the doctrine argued alongside these.
Trademark Dilution Under the TDRA — the second doctrine with the same line.

Primary Authorities

| Authority | Rule, in one line | |---|---| | 15 U.S.C. § 1052(a) | Deceptive matter and false suggestion of a connection; the surviving content bars. | | 15 U.S.C. § 1052(c) | No registration of a living individual's name without written consent. | | 15 U.S.C. § 1052(d) | Likelihood of confusion; frequently the ground actually available. | | 15 U.S.C. § 1052(e) | Descriptive, geographic, and surname bars; viewpoint-neutral throughout. | | 15 U.S.C. § 1063 | Opposition; the route against an application you dislike. | | 15 U.S.C. § 1064 | Cancellation. | | 15 U.S.C. § 1114 | Infringement of a registered mark. | | 15 U.S.C. § 1115(b)(4) | Descriptive fair use as a statutory defense. | | 15 U.S.C. § 1125(a) | False designation of origin; the claim against expressive uses. | | 15 U.S.C. § 1125(c) | Dilution by blurring and tarnishment; the fame threshold. | | 15 U.S.C. § 1125(c)(3) | Exclusions for fair use including parody, news commentary, and noncommercial use. | | 15 U.S.C. § 1125(d) | Cybersquatting; the bad-faith element that gripe sites usually defeat. | | 15 U.S.C. § 1127 | Definitions; use in commerce and what functions as a mark. | | 17 U.S.C. § 107 | Copyright fair use; the parallel analysis where the work is also copied. | | 17 U.S.C. § 512(f) | Misrepresentation liability for a baseless takedown. | | 28 U.S.C. § 2201 | Declaratory judgment; what a speaker may file after your letter. |

Forms and Templates

The counseling memo is the form that matters most here, and it is short: what the use is, whether it is expressive or source-identifying, whether a reasonable consumer would be confused about source, what the statutory exclusions cover, what the anti-SLAPP exposure looks like in the relevant jurisdiction, what a demand letter would likely produce commercially, and a recommendation. Write it before any communication goes out. A client who has read an honest memo makes better decisions than one who has only heard "we could send a letter."

Cease-and-Desist Template should be used with unusual care in this area. Where a letter is warranted — a merchandising program using the mark as a source designation, for instance — strip the litigation recitations, address the specific commercial use rather than the expression, propose a concrete fix such as a redesign, and write it as though it will be published, because it may be. See Sending an Effective Cease-and-Desist Letter.

Coexistence Agreement Template supplies the structure for the resolution these matters usually reach when they resolve well: an agreed presentation, a limitation on the commercial surfaces where the mark appears, and a mutual release — leaving the expression intact and removing the source-identifying use that created the claim.

License Agreement Template is the underused answer for a use a brand actually likes. A short, revocable, non-commercial community license for fan works and enthusiast projects converts an enforcement problem into a relationship, at a cost of one page. See Draft License Agreement.

Related Toolkits and Checklists

Trademark Defenses Toolkit is the full defensive treatment and should be read before sending any demand in this area. Fair Use and Permissions Toolkit covers clearance across copyright, trademark, and publicity rights.

Virtual Goods and Digital Brand Toolkit covers where the expressive-use line is most actively litigated today. Right of Publicity and Personal Brand Toolkit covers the parallel doctrine for people.

Advertising and Marketing Law Toolkit covers comparative advertising and the falsity analysis these disputes frequently become. Trademark Dispute Resolution Toolkit covers the demand-letter decision and the declaratory-judgment risk it creates. Distinctiveness and Genericness Toolkit covers the registrability analysis alongside the content bars.