Trademark Basics
A trademark is a word, name, symbol, device, or combination thereof used in commerce to identify and distinguish the goods or services of one party from those of others and to indicate the source of those goods or services. Unlike copyright (which protects creative expression) or patent (which protects inventions), trademark protects brand identity and consumer goodwill. Trademark rights arise from use in commerce — not from registration, though registration provides significant additional benefits. In entertainment, trademarks protect studio brands, artist names, character names, franchise titles, and production company identifiers.
Trademark law shapes the commercial identity of entertainment properties from launch through their entire commercial lifecycle. Whether a band can use a name, whether a film title can be registered, whether a character's name can be merchandised, and whether a competitor's branding creates consumer confusion — all are trademark questions entertainment attorneys encounter regularly. The intersection of trademark law and First Amendment protection for artistic works is a particularly active area following the Supreme Court's 2023 Jack Daniel's decision.
The federal trademark statute — governs registration, infringement, dilution, and false designation of origin.
Infringement of registered marks — prohibits use of a registered mark in commerce in connection with goods/services likely to cause consumer confusion.
Section 43(a) — false designation of origin. Protects unregistered marks and trade dress from likelihood of confusion. The primary cause of action for unregistered trademark claims.
Dilution — protects famous marks from uses that blur or tarnish their distinctiveness, even without consumer confusion. Only available to famous marks.
Prohibits bad faith registration of domain names that are identical or confusingly similar to another's mark.
Whether a dog toy parodying Jack Daniel's whiskey bottle was protected by the Rogers test for expressive works, or whether trademark infringement analysis applied.
The Supreme Court held that the Rogers test does not apply when a defendant uses a mark as a source identifier — even in an expressive context. Significantly narrowed the artistic relevance defense for marks used in commercial products. Most important trademark decision for entertainment in years.
Whether the title 'Ginger and Fred' (a film about dancers imitating Ginger Rogers and Fred Astaire) infringed Ginger Rogers's right of publicity and constituted trademark infringement.
The Second Circuit established the Rogers test: titles of artistic works are only actionable under trademark law if they have no artistic relevance to the underlying work OR if they explicitly mislead consumers about the source of the work. Protected entertainment titles from trademark liability — though its scope has been narrowed by Jack Daniel's.
The Jack Daniel's decision has meaningfully increased trademark risk for entertainment products that use third-party marks — even humorously or expressively. Character merchandise, branded entertainment, and satirical products that previously relied on the Rogers test now require more careful analysis. At the same time, trademark enforcement by studios and labels against unauthorized merchandise and fan goods has become more aggressive, creating tension with fan creativity and First Amendment expression.
File federal trademark applications for client artist names, studio brands, and franchise titles early — before commercial success, when the field is clearer and costs are lower.
Post-Jack Daniel's, do not advise clients that the Rogers test protects any use of a third-party mark as a source identifier in commercial products — the analysis now requires examining whether the mark is being used as a source indicator.
Single film titles generally cannot be registered as trademarks — series titles can. The MPAA Title Registration Bureau provides a private clearance system that operates alongside federal registration.
Trademark registration provides the presumption of ownership, right to use the ® symbol, and access to federal court jurisdiction — advise unregistered mark users to register promptly.
Monitor USPTO records for conflicting applications — send a cease and desist before an application matures into a registration when the conflict is clear.
Trademark rights arise from use in commerce — registration provides additional benefits but is not required for protection to exist.
Likelihood of consumer confusion is the test for infringement — courts apply a multi-factor test weighing strength of mark, similarity, competitive proximity, and actual confusion.
The Jack Daniel's decision (2023) narrowed the Rogers test — uses of marks as source identifiers in commercial products are now subject to standard trademark analysis even if the product is expressive.
Dilution protects famous marks from blurring or tarnishment without requiring confusion — available only to truly famous marks like major studio brands.
Single film titles generally cannot be trademarked — franchise titles can be registered if used consistently across multiple releases.
Yes, if it is used in commerce and is sufficiently distinctive. Descriptive or generic names are harder to register without showing secondary meaning. The USPTO has extensive case law on entertainment-related trademarks, particularly for musical artists.
Jack Daniel's significantly narrowed the Rogers test, which previously provided broad protection for expressive works from trademark liability. After Jack Daniel's, uses of marks as source identifiers in commercial products — including merchandise, games, and consumer products — are now subject to standard trademark likelihood of confusion analysis even if the product has artistic elements.
A private system operated by major studios that allows advance registration of film and television titles. Registration creates a priority claim against later conflicting registrations within the system. It operates alongside federal trademark registration and is used by major studio productions as a first step in title clearance.