For many years, courts often applied the quintessential likelihood-of-confusion test for trademark infringement claims more narrowly when analyzing allegedly infringing products that were also works of artistic expression. For such products, courts generally applied a threshold First Amendment test, as established by the Second Circuit in Rogers v. Grimaldi. However, in Jack Daniel's Properties, Inc. v. VIP Products, LLC, the U.S. Supreme Court held that the Rogers test does not apply "when an alleged infringer uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer's own goods." Since then, some courts—relying on Jack Daniel's—have refused to apply Rogers to expressive works that use trademarks as a source designator. You can read more about the Supreme Court's Jack Daniel's decision in our article SCOTUS: Dog Toy in the Doghouse as Jack Daniel's Trademark Infringement Claims Remanded to District Court, and about a Second Circuit case applying Jack Daniel's in our article Parody Sneaker Afforded No First Amendment Protection Against Vans' Trademark Infringement Claims. The Ninth Circuit, relying on Jack Daniel's, also recently refused to apply Rogers and revived a trademark infringement suit brought by Punchbowl, Inc. against a news publication using the term "Punchbowl," even though the publication was an expressive work.
The plaintiff, Punchbowl, Inc., provides online invitations and greeting cards as part of a subscription-based service to clients such as Disney, Chuck E. Cheese, and Dave & Busters. Punchbowl had used its "Punchbowl" mark since at least 2006 and registered the mark in 2013. Punchbowl's mark and logo are shown below:
The defendant, AJ Press, LLC, used "Punchbowl" as the title of its Punchbowl News publication, a subscription-based online news publication covering American government and politics ("Punchbowl" is the nickname that the Secret Service uses for the U.S. Capitol). AJ Press also filed trademark applications to register "Punchbowl News" as well as "Punchbowl Press." The Punchbowl News mark and logo are shown below:
Prior to the Jack Daniel's decision, Punchbowl sued AJ Press, alleging federal trademark infringement and unfair competition and parallel state law claims. When AJ Press filed a motion to dismiss, the district court converted it to a motion for summary judgment, which the district court granted. The district court had held that AJ Press's use of "Punchbowl" did not give rise to liability because, under Rogers, it constituted protected expression and was not explicitly misleading as to its source. The Ninth Circuit affirmed based on circuit precedent applying Rogers, including its own Jack Daniel's decision (before the Supreme Court had granted review of that opinion). A mere week later, the Supreme Court granted certiorari in Jack Daniel's, and the Ninth Circuit stayed the mandate applying its original opinion in favor of AJ Press. Then, in light of the Supreme Court's opinion in Jack Daniel's, the Ninth Circuit withdrew its prior decision, ordered supplemental briefing, and heard re-argument.
Upon de novo review, the Ninth Circuit held that, in light of the analysis required by Jack Daniel's, Rogers did not apply to Punchbowl's suit. Although the Ninth Circuit noted that the Jack Daniel's opinion did not address the broader validity of Rogers, the Ninth Circuit also emphasized that the Supreme Court clearly held that Rogers does not apply where an infringer is using a mark to "designate the source of its own goods—in other words, has used a trademark as a trademark." Thus, the Ninth Circuit rejected AJ Press's arguments that the Rogers test still applied because—unlike the defendant in Jack Daniel's—AJ Press was not using "Punchbowl" to parody or otherwise refer to Punchbowl, and the parties were simply using the same common word to identify their respective brands in different markets. Because AJ Press used its Punchbowl News and Punchbowl Press marks to identify and distinguish its news products—as evidenced by its trademark applications to register those marks—the court found that AJ Press had used the marks as source identifiers and thus that Rogers did not apply. Accordingly, the Ninth Circuit remanded the case to the district court with directions to proceed on a likelihood-of-confusion analysis.
In a potential glimmer of hope for AJ Press, however, the Ninth Circuit clarified that the nature of AJ Press's use of "punchbowl" and the fact that "punchbowl" is a common word will nevertheless be relevant in the likelihood-of-confusion analysis on remand. Specifically, the court noted that "[w]hen companies operating in different spaces use the same common words as trademarks with different expressive connotations, it reduces the likelihood of confusion." Accordingly, there is a chance that AJ Press may ultimately succeed on remand after all.
The case is Punchbowl, Inc. v. AJ Press, LLC, 90 F.4th 1022 (9th Cir. 2024).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
