by Keon Park*

With the rise of the modern trademark that veers into the realm of constitutional speech rights, circuit courts have adopted varying approaches to balance competing trademark interests and free speech protections. The majority approach to striking this judicial balance among circuit courts is governed by the Rogers test, a threshold inquiry that, if met, almost invariably calls for dismissal of trademark infringement claims for expressive works. However, the Supreme Court in Jack Daniel’s Properties Inc. v. VIP Products LLC partially ruled against the use of the Rogers test for marks used to identify the source of a product. While circuit courts have continued to apply Rogers in other contexts, several have called for an alternate approach, questioning Rogers’ validity as a whole. But given the rise of non-traditional purposes of trademarks in the modern era of advertising where brands such as Rolls-Royce are associated with quality rather than solely signifying the maker of the car, courts should continue to use the Rogers balancing test to protect the expressive speech rights of the general public.

 

A trademark is “a symbol or a device to distinguish the goods or property made or sold by the person whose mark it is, to the exclusion of use by all other persons.”1 The Lanham Act2 provides for a national system of trademark registration and prevents others from using similar marks.3 The purpose of the Act, and the broader trademark system, is to protect both the owners of the marks as well as the consumer public by preventing ownership confusion and ensuring marks adequately identify and distinguish goods.4 For example, a Louis Vuitton knockoff purse that exploits use of the brand’s well-known logo is prohibited from being sold under the Lanham Act because such a sale would misappropriate the goodwill and trust created by the actual brand while also potentially misleading consumers into purchasing an unauthenticated product they otherwise may not have.5 Trademark has a certain appeal to it: it taps into the morally attractive intuition that if you make something, it is yours.6

However, trademark rights are not absolute. In the wake of increasing commercialization, trademark rights have crept into the realm of First Amendment doctrine.7 One such conflict between trademark rights and free speech arises when trademarks enter the broader vocabulary of everyday speech. Precisely because new products are meant to fill gaps in consumer needs, the best word to describe the product usually ends up being the trademark itself.8 For example, most consumers only know aspirin by its trademarked name—seldom will you hear someone ask for “acetyl salicylic acid” at the pharmacy counter.9 Additionally, in the modern era of commercial products, some brands are associated as the best of their class by mere mention of the brand name without any further elaboration.10

When these new words and brand associations are thrust onto society by trademark owners, they take on a communicative meaning of its own.11 Take the example of Rolls Royce–its trademark is so ingrained into popular culture that it has its own definition in the Oxford English Dictionary.12 While Rolls Royce has an interest in preserving its trademark rights, society at large also has an interest in free expression—to use a Rolls Royce as a signifier of quality.13 As illustrated, trademarks have transcended their original purpose of brand identification and have bled into the realm of expression. In turn, a conflict has arisen between the trademark owner’s interests and the public’s interests in free speech under the First Amendment.

The best way to uphold both trademark protections and free speech rights is through faithful application of the Second Circuit’s test established in Rogers v. Grimaldi. Although the test has since been questioned by a minority of the Supreme Court14, Rogers should be unequivocally upheld as the standard analysis unless a defendant has used someone else’s trademark to mislead consumers as to the maker of the product.

In Rogers, the Second Circuit addressed the conflict between trademark interests and free speech when Ginger Rogers sued the producers and distributors of a film titled “Ginger and Fred,” which did not feature Ginger Rogers or Fred Astaire.15 The issue arose because Rogers and Fred Astaire frequently co-starred in movies during the 1930s and 1940s, and, due to their international fame, became readily identifiable by their first names only: Ginger and Fred.16 In considering the competing interests—Rogers’ trademark interests in her own name on the one hand and the defendants’ free speech interests to create an expressive work using cultural figures on the other hand—the Second Circuit created a two-prong test.17 The court established that there is no trademark infringement if the title to an artistic work uses a trademark if (1) the mark has at least some artistic relevance to the work and (2) the mark is not explicitly misleading as to the source or content of the work.18 Applying this test, the Second Circuit affirmed the dismissal of Ginger Rogers’ claim, concluding that defendant’s film was an artistic work in which the usage of “Ginger and Fred” was at least “minimally relevant” and not “explicitly misleading” as to “authorship, sponsorship, or endorsement by the celebrity.”19 The court further employed the principle of constitutional avoidance, creating a wide carve-out in trademark law to avoid unnecessarily intruding into the domain of First Amendment doctrine.20 Until recently, most circuits adopted the Rogers test for trademark disputes involving expressive works to varying degrees, accepting the need to balance free speech against trademark interests and recognizing that the Rogers test does just that.21

In 2023, however, the Supreme Court unanimously ruled in Jack Daniel’s Properties, Inc. v. VIP Products LLC that the Rogers test should not be applied when the allegedly infringing mark is used to identify the source of the product, leaving the question of its general applicability open.22 In this case, most relevantly, Jack Daniel’s alleged that a dog chew toy sold by VIP infringed on their trademark.23 The toy in question was a similar bottle size and portrayed the distinctive squared-off shaped logo with black and white stylized text, invoking the image of Jack Daniel’s famous whiskey bottle.24 VIP countered that the Rogers test calls for dismissal of the trademark infringement claim because the dog chew expressed a humorous message meant to parody and “make fun” of the Jack Daniel’s brand.25

The Court reasoned that because the trademark in the Jack Daniel’s distinctive whiskey bottle design was being used to denote the producer of the bottle, employing the Rogers test was inappropriate.26 The Court further noted that application of the Rogers test where the trademark is used in a source-identifying manner would confound the “core concerns of trademark law”—preventing consumer confusion as to source.27 Despite the Court’s abrogation of the Rogers test with respect to source-identifying marks, the majority explicitly left the question of the Rogers test’s general applicability open.28

Presently, while Rogers still stands, at least three sitting justices seem to want something different. Justice Gorsuch, joined by Justices Thomas and Barrett, wrote a concurring opinion in Jack Daniel’s raising broader concerns about Rogers, stating that “it is not obvious that Rogers is correct in all its particulars.”29 Likewise, in a case regarding speech rights that conflicted with trademark registration rules, Justice Barrett rejected the majority’s history and tradition approach to upholding trademark restrictions, instead calling for restrictions to be permissible so long as they are merely “reasonable in light of the trademark system’s purpose of facilitating source identification,” endorsing a pro-trademark approach at the expense of speech rights.30 These concurrences suggest that something different may be on the horizon.

The Court should affirm the use of the Rogers test in non-source-identifying contexts—contexts where the use of the trademark does not mislead as to the maker of the product, such as using the term “Rolls-Royce” as a descriptor to signify quality—and avoid its full abrogation because the test best balances competing trademark and First Amendment interests. First, affirming the general applicability of the Rogers test would align with the majority’s reasoning in Jack Daniel’s, where the Court posited that to the extent a mark is confusing as to its source, the law can prevent such confusion without infringing on the First Amendment.31 The core premise of Rogers fits neatly into the bounds the Court has set—when the use of a trademark is not explicitly misleading and is artistically relevant, its use is not confusing, and therefore, society’s interest in free speech should trump any trademark owner’s interests.32 While the Court’s decision in Jack Daniel’s circumscribes Rogers, its rationale still aligns with Rogers’ core idea that free speech interests outweigh trademark owners’ interests when a trademark is no longer used to identify the maker of the product, but rather used expressively.33

Second, although the Court left the issue of the test’s broader applicability open, explicitly affirming Rogers would not only be the path of least resistance because it is the majority approach among circuits when dealing with expressive works, but also because it is the fairest way to protect First Amendment rights in the trademark context.34

Affirming Rogers in non-source-identifying contexts is also more than convenient; it is the best test that the circuit courts have developed and has withstood the test of time.35 Jack Daniel’s was a sensible limit placed on the Rogers test to avoid having the exception swallow the rule and to remain faithful to the core purpose of trademark protections of preventing consumer confusion when identifying brands. However, limiting Rogers any further would be an overcorrection. The Court should recognize the evolving role of trademarks in the modern age, one where “fashion-conscious consumers wear T-shirts emblazoned with the trademarks of consumer products and owners of Volkswagens buy conversion kits to enable them to put a Rolls Royce grille on their car.”36 Given the growing functional nature of trademarks in both language, such as the widespread use of the term “aspirin” and in creating appeal, such as the marketing of Rolls-Royce to signify quality, in addition to the extant purpose of merely identifying the manufacturer, the Court should uphold Rogers for non-source-identifying uses of trademarks.37 Rogers is not only the best test to balance the conflict between trademarks and free expression, but also simplifies an otherwise confusing trademark landscape.38 The Ninth Circuit’s continued usage of Rogers supports the contention that Rogers provides the best framework for non-source-identifying marks post-Jack Daniel’s.39

Additionally, affirming Rogers in non-source-identifying contexts would promote stability and predictability in the enforcement of trademark rights. By not affirming Rogers, Jack Daniel’s will increase uncertainty across circuits. Given the national impacts of trademark infringement cases, these inconsistencies encourage forum shopping, as plaintiffs with a stake in a particular trademark have an incentive to commence suit for infringement in circuits that employ more limited applications of the Rogers test, which comes at the cost of providing for robust protections for defendants’ expressive speech.40 A uniform standard would facilitate private ordering, allowing plaintiffs and defendants alike to act in accordance with set expectations as to the scope of their legal rights.41

Conversely, those less willing to affirm Rogers may claim that the status quo fragmentation in circuit courts is beneficial insofar as it allows lower courts to craft new tests.42 For instance, the existence of a uniform standard would have foreclosed the doctrinal flexibility that allowed for a trailblazing decision like Rogers in the first place. However, given the length of time since Rogers was decided and considering the benefits of uniformity in the federal trademark system, continued fragmentation is unlikely to yield any further benefits. Therefore, while Justice Gorsuch may want to simply overrule Rogers,43 without an alternate standard, this result is undesirable.

Another inferior alternative would be overruling Rogers in favor of the full adoption of the consumer confusion tests that presently govern trademark disputes not involving expressive works. Currently, in evaluating trademark infringement claims, all circuits generally agree that the relevant inquiry is the extent of consumer confusion considering several factors, like the similarity between the trademark and the alleged infringement.44 However, when it comes to specifics, the consumer confusion test differs slightly in every circuit, with slightly varying factors.45 For example, the Second Circuit applies the Polaroid factors46, the Fourth Circuit applies the Pizzeria Uno factors47, and the Ninth Circuit applies the Sleekcraft factors48. The tests also emphasize different factors. The Second Circuit emphasizes the similarity of the marks and proximity of the goods, the Fourth Circuit emphasizes evidence of actual confusion, and the Ninth Circuit emphasizes similarity of the marks, proximity of the goods, and the commonality of the marketing channels.49 Additionally, some circuits caveat that the multi-factor test is not exhaustive and other factors that could contribute to consumer confusion may be considered.50 Applying the consumer confusion test in its fragmented, incoherent form to the intersection of trademark and First Amendment would only add to the complications of modern trademark law.51

As noted by the Ninth Circuit, the standard consumer confusion test “generally strikes a comfortable balance between the trademark owner’s property rights and the public’s expressive interests.”52 The Supreme Court also implicitly ruled for the use of the consumer confusion test for source-identifying marks in Jack Daniel’s by ruling against the use of Rogers for those marks.53 However, there are several problems with the consumer confusion test. As scholars have pointed out, the consumer confusion test’s variance across circuits causes inconsistent application and litigation uncertainty.54 This in turn limits beneficial uses of trademarks by creating potential for defendants to be sued in a plaintiff-friendly courts, once more creating adverse conditions for forum shopping.55 Furthermore, as the Ninth Circuit noted, when a trademark is one of the only practical ways to express an idea (like aspirin) or when it has taken on some greater meaning (like the symbol of quality expressed by the Rolls Royce logo), “the traditional [consumer confusion] test fails to account for the full weight of the public’s interest in free expression.”56 Because of the complex and inconsistent nature of the consumer confusion test, it should be avoided when possible. The Rogers test provides the best escape.

* Keon Park is a J.D. Candidate (2026) at New York University School of Law. This Contribution is a commentary on the problem at the 2025 Frank A. Schreck Gaming Law Moot Court Competition hosted by William S. Boyd School of Law. One of the questions presented was whether the usage of a mark similar to another company’s trademark violated the Lanham Act when used in a non-source-identifying manner.

 

1. Trade-Mark Cases, 100 U.S. 82, 92 (1879).

2. 15 U.S.C. §§ 1051 et seq.

3. See Jack Daniel’s Props. v. VIP Prods. LLC, 599 U.S. 140, 146–47 (2023).

4. See id.

5. See id. at 157 (contrasting expressive use of a Louis Vuitton suitcase with a knockoff-like use of a slightly modified Louis Vuitton logo and explaining that the latter is more likely to confuse consumers about source); Vidal v. Elster, 602 U.S. 286, 288 (2024) (identifying trademark law’s historical rationale to be “identifying the source of goods and thus ensuring that consumers know the source of a product and can evaluate it based upon the manufacturer’s reputation and goodwill”).

6. See Alex Kozinski, Trademarks Unplugged, 68 N.Y.U. L. Rev. 960, 975 (1993).

7. See Rochelle Cooper Dreyfuss, Expressive Genericity: Trademarks as Language in the Pepsi Generation, 65 Notre Dame L. Rev. 397, 397 (1990) (noting that trademarks have passed into popular culture as vehicles of expression, becoming “indicators of the status, preferences, and aspirations of those who use them”).

8. See id. at 416–17.

9. Id. at 417 n.112; see also Mattel, Inc. v. MCA Records, 296 F.3d 894, 900 (9th Cir. 2002) (“Does the average consumer know to ask for aspirin as ‘acetyl salicylic acid?’”) (citing Bayer Co. v. United Drug Co., 272 F. 505, 510 (S.D.N.Y. 1921)).

10. See Mattel, 296 F.3d at 900 (“How else do you say that something’s ‘the Rolls Royce of its class?’”).

11. See Kozinski, supra note 6 (“Words and images do not worm their way into our discourse by accident; they’re generally thrust there by well-orchestrated campaigns intended to burn them into our collective consciousness. . . . The originator must understand that the mark or symbol or image is no longer entirely its own, and that in some sense it also belongs to all those other minds who have received and integrated it.”).

12. Rolls-Royce, Oxford English Dictionary, https://www.oed.com/dictionary/rolls-royce_n?tab=meaning_and_use#25220074 [https://perma.cc/C6HG-5KLF] (last visited Mar. 24, 2026).

13. See, e.g., Complaint at 1–3, Rolls-Royce Motor Cars Ltd. v. One Source to Mkt. LLC., 2:23-cv-08387 (D.N.J. Aug. 23, 2023); Adam Hurrey & Thom Harris, Imposing, effortless and unflappable: Who are the Premier League’s true Rolls-Royces?, N.Y. Times: The Athletic (Oct. 23, 2023), https://www.nytimes.com/athletic/4981792/2023/10/21/premier-league-rolls-royce-players/ [https://perma.cc/CF24-JV36].

14. Jack Daniel’s, 599 U.S. at 165 (Gorsuch, J., concurring).

15. Rogers v. Grimaldi, 875 F.2d 994, 996–97 (2d Cir. 1989).

16. Id. at 996.

17. Id. at 1000.

18. Id.

19. Id. at 1005.

20. See id. at 998 (“Because overextension of Lanham Act restrictions in the area of titles might intrude on First Amendment values, we must construe the Act narrowly to avoid such a conflict.”) (citing Edward J. DeBartolo Corp. v. Florida Gulf Coast Building & Trades Council, 485 U.S. 568 (1988)).

21. See, e.g., Twin Peaks Prods., Inc. v. Publ’ns Int’l, Ltd, 996 F.2d 1366, 1379 (2d Cir, 1993); E.S.S. Ent. 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1099 (9th Cir. 2008); Univ. of Alabama Bd. of Trustees v. New Life Art., Inc., 683 F.3d 1266, 1278 (11th Cir. 2012); Parks v. LaFace Records, 329 F.3d 437, 450 (6th Cir. 2003); Radiance Found., Inc. v. NAACP, 786 F.3d 316, 329 (4th Cir. 2015); Sugar Busters LLC v. Brennan, 177 F.3d 258, 269 n.7 (5th Cir. 1999); see also Seale v. Grammercy Pictures, Inc., 156 F.3d 1225 (3d Cir. 1998) (affirming the use of the Rogers test in Seale v. Gramercy Pictures 949 F. Supp. 331 (E.D. Pa. 1996)).

22. See Jack Daniel’s, 599 U.S. at 163.

23. Id. at 149.

24. Id.

25. Id. at 153

26. Id. at 163.

27. Id. at 155–57 (quoting Dinwoodie & Janis, Confusion Over Use: Contextualism in Trademark Law, 92 Iowa L. Rev. 1597, 1636 (2007)).

28. Jack Daniel’s, 599 U.S. at 163.

29. Id. at 165 (Gorsuch, J., concurring).

30. Vidal, 602 U.S. at 311–12 (Barrett, J., concurring).

31. Jack Daniel’s, 599 U.S. at 159 (citing Matal v. Tam, 582 U.S. 218, 252 (2017) (Kennedy, J., concurring in part and concurring in judgment)).

32. See Rogers, 875 F.2d at 1005.

33. Compare id., with Jack Daniel’s, 599 U.S. at 159 (citing Matal, 582 U.S. at 252 (2017) (Kennedy, J., concurring in part and concurring in judgment)).

34. See supra note 21.

35. See Hara v. Netflix, Inc., 146 F.4th 872, 879 (9th Cir. 2025) (continuing to apply the Rogers test 36 years after the test’s initial use in Rogers).

36. W.T. Rogers Co. v. Keene, 778 F.2d 334, 340 (7th Cir. 1985).

37. See id.; Dreyfuss, supra note 7.

38. See Barton Beebe, An Empirical Study of the Multifactor Tests for Trademark Infringement, 94 Calif. L. Rev. 1581, 1582 (2006) (“Each circuit has developed its own formulation of the [multifactor analysis of the likelihood of consumer confusion] test.”).

39. Hara, 146 F.4th at 879 (affirming the use of the Rogers test for expressive works using a trademark in a non-source-identifying manner to dismiss Lanham Act claims post-Jack Daniel’s); see also Jack Daniel’s, 599 U.S. at 154 (citing Mattel, Inc. v. MCA Records, 296 F.3d 894 (9th Cir. 2002)) (drawing rationale for the Court’s holding from the Ninth Circuit).

40. See id.

41. See Samuel Issacharoff, Symposium: Litigation Reform Since the PSLRA: A Ten-Year Retrospective: Panel Four: Class Action Fairness Act: Settled Expectations in a World of Unsettled Law: Choice of Law After the Class Action Fairness Act, 106 Colum. L. Rev. 1839, 1852 (2006) (“[I]mprecise legal rules defeat the needed predictability for parties to make informed assessments of their rights and responsibilities.”).

42. See New State Ice Co. v. Liebmann, 285 U.S. 262, 311 (1932) (Brandeis, J., dissenting) (“It is one of the happy incidents of the federal system that a single courageous State may, if its citizens choose, serve as a laboratory; and try novel social and economic experiments without risk to the rest of the country.”).

43. Jack Daniel’s, 599 U.S. at 165 (Gorsuch, J., concurring).

44. See Beebe, supra note 38.

45. Id.

46. Polaroid Corp. v. Polarad Electronics, 287 F.2d 492, 495 (2d Cir. 1961) (considering “[1] the strength of his mark, [2] the degree of similarity between the two marks, [3] the proximity of the products, [4] the likelihood that the prior owner will bridge the gap, [5] actual confusion, and [6] the reciprocal of defendant’s good faith in adopting its own mark, [7]  the quality of defendant’s product, and [8] the sophistication of the buyers” and further noting “[e]ven this extensive catalogue does not exhaust the possibilities—the court may have to take still other variables into account”).

47. Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984) (considering “[1] the strength or distinctiveness of the mark; [2] the similarity of the two marks; [3] the similarity of the goods/services the marks identify; [4] the similarity of the facilities the two parties use in their businesses; [5] the similarity of the advertising used by the two parties; [6] the defendant’s intent; [7] actual confusion” and further noting that not all factors are equally emphasized).

48. AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir. 1979) (considering “1. strength of the mark; 2. proximity of the goods; 3. similarity of the marks; 4. evidence of actual confusion; 5. marketing channels used; 6. type of goods and the degree of care likely to be exercised by the purchaser; 7. defendant’s intent in selecting the mark; and 8. likelihood of expansion of the product lines”).

49. Beebe, supra note 38 at 1599 (2006) (outlining the different emphasized factors of each circuit in its consumer confusion test).

50. Multi Time Mach., Inc. v. Amazon.com, Inc., 804 F.3d 930, 936 (9th Cir. 2015); Soc’y of Fin. Exam’rs v. Nat’l Ass’n of Certified Fraud Exam’rs Inc., 41 F.3d 223, 228 n.15 (5th Cir. 1995).

51. See Beebe, supra note 38 at 1582 (describing the consumer confusion test as “Babelian” and “in a state of disrepair”).

52. Mattel, 296 F.3d at 900.

53. See Jack Daniel’s, 599 U.S. at 161 (rejecting Rogers for source-identifying marks in parodies and providing guidance on the consumer confusion test for parodies).

54. Robert G. Bone, Taking the Confusion Out of Likelihood of Confusion: Toward a More Sensible Approach to Trademark Infringement, 106 Nw. U. L. Rev. 1307, 1308 (2012).

55. Id.

56. Mattel, 296 F.3d at 900.