IP UPDATE
Exploring the Latest in Intellectual Property Law
IP UPDATE
Exploring the Latest in Intellectual Property Law
Trademarks
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Actual Confusion Is the Best Evidence of Confusion

by | Feb 9, 2023 |

The US Court of Appeals for the Eighth Circuit reversed and vacated a district court’s preliminary injunction grant in a trademark dispute, concluding that potential confusion is insufficient to satisfy the burden of showing a substantial likelihood of confusion. H&R Block, Inc.; HRB Innovations, Inc. v. Block, Inc., Case Nos. 22-2075; -2023 (8th Cir. Jan. 24, 2023) (Gruender, Erickson, JJ.) (Melloy, J., dissenting).

H&R Block was founded in 1955 and specializes in income tax preparation and other tax and financial services. Over the years, H&R Block has invested billions of dollars in advertising campaigns and has developed significant market presence both in person and online. The company has also obtained several federal registrations directed to the use of a green square logo with its products and asserts that in addition to “H&R Block” it is known as just “Block.”

Square, Inc., is the company behind the Square payment card reader and point-of-sale software that allows individual sellers to accept credit card payments. Square was founded in 2009 and grew over time by acquiring or developing other businesses. Cash App is one of Square’s businesses. Cash App started in 2013 as Square Cash and is a purely digital platform that allows users to deposit and store money on the app. In November 2020, Square acquired free tax credit service Credit Karma Tax, which was rebranded as Cash App Taxes and integrated into the Cash App platform for the 2022 tax season. In December 2021, Square was renamed Block, Inc., and the name change was publicized via Twitter.

Fifteen days after the name change was announced, H&R Block filed suit alleging trademark infringement. Shortly thereafter, H&R Block moved for a preliminary injunction. The district court analyzed the marks at issue for likelihood of confusion and granted, in part, H&R Block’s request for a preliminary injunction. Block appealed.

The Eighth Circuit analyzed a list of six non-exclusive and non-exhaustive factors in assessing likelihood of confusion:

  1. The strength of the owner’s mark
  2. The similarity of the owner’s and the alleged infringer’s marks
  3. The degree to which the products compete with each other
  4. The alleged infringer’s intent to pass off its goods as those of the trademark owner
  5. Incidents of actual confusion
  6. The type of product, its cost and its conditions of purchase.

The Eighth Circuit agreed with the district court that H&R Block had demonstrated that its registered and common law marks were commercially strong but found that the record as a whole did not weigh in favor of H&R Block on the similarity factor because there were observable differences between the two logos and the competing products.

The Eighth Circuit indicated that ultimately the best evidence of likelihood of confusion is actual consumer confusion. While the record supported possible confusion by some consumers, the Court found that the district court had erred in finding actual consumer confusion and that H&R Block had not presented sufficient evidence to rise to the level of substantial confusion by an appreciable number of ordinary consumers. [...]

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2023 IP Outlook: What to Watch in Patent, Trademark and Copyright Law

by , , , , , , , , , , , , , and | Feb 7, 2023 | , , , , ,

Coming out of 2022, developments around the globe are shaping the intellectual property (IP) landscape in the new year. We are seeing cases at the intersection of IP law and NFTs, the opening of the Unified Patent Court in Europe, and decisions from the Supreme Court of the United States and the Court of Appeals for the Federal Circuit affecting innovators and brand owners.

McDermott’s 2023 IP Outlook examines the top trends and decisions in IP law from the past year and shares what you and your business should look out for in the year ahead.

The Latest in SEP Licensing

Amol Parikh

The uncertainty surrounding standard essential patent (SEP) licensing persisted in 2022 and shows little sign of clearing in 2023. SEPs must be licensed to technology implementers on fair, reasonable and nondiscriminatory (FRAND) terms. Because there is no formal definition of FRAND terms, however, legal decisions involving FRAND have historically been determined by courts and non-governmental standard-setting organizations (SSOs). Disputes are frequent—especially between patent owners and technology implementers—and are becoming even more so as advanced wireless technologies such as 5G and WiFi 6 proliferate. Read more.

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Improper Inventorship in US Patent Litigations

Mandy H. Kim | Cecilia Choy, Ph.D.

Inventorship issues can have serious implications in patent litigation, leading to invalidation or unenforceability of the patent at issue, as seen in several notable 2022 cases. In the coming year, patent owners should take steps to minimize risks related to improper inventorship challenges. Read more.

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Patent Decisions Affecting Pharma and Biotech Companies

Douglas H. Carsten | Anisa Noorassa

The past year brought many developments in the life sciences patent legal space. Three decisions in particular hold potential ramifications for drug makers and patent holders in 2023. This year, the Supreme Court of the United States is also expected to consider standards patents claiming a genus must meet to withstand a validity challenge under Section 112—a ruling that could have a significant impact on patent holders in the biotech industry. Read more. 

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Trends in the Western District of Texas

Syed K. Fareed | Alexander Piala, Ph.D. | Christian Tatum

Over the past year, two developments infiltrated the Western District of Texas (WDTX) which may decrease the success of venue transfers and keep case volume steady in 2023. These developments could also give plaintiffs more control over where litigation takes place, including more control over having a case tried before Judge Alan Albright in the Waco Division of the WDTX.
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Strings Attached: No Amendment for Trademark Application in Inter Partes Opposition Proceeding

by | Feb 2, 2023 |

The Trademark Trial & Appeal Board (Board) designated as precedential a decision denying a motion to amend and granting partial summary judgment based on a mistaken identification that did not match the goods sold using the trademark. Fender Musical Instruments Corporation v. Win-D-Fender, LLC, Opp. No. 91272326 (TTAB Sept. 22, 2022) (designated precedential Jan. 12, 2023) (Wolfson, Heasley, Cogins, ATJs) (By the Board).

Win-D-Fender applied for a trademark to register the mark EN-D-FENDER for “musical instruments.” Fender opposed this registration on grounds of nonuse, likelihood of confusion and dilution by blurring and filed a motion for summary judgment on the ground of nonuse. Win-D-Fender then filed a motion to amend the identification of goods in its application from “musical instruments” to “musical instrument accessories, namely, an ambient wind foot joint guard for flute family instruments.”

The Board first considered Win-D-Fender’s motion to amend. Under the relevant trademark rules, an application that is subject to an inter partes proceeding may only be amended if the other party consents (Fender did not) and the Board gives approval, or if the Board grants a motion to amend.

Win-D-Fender filed its application via the Trademark Electronic Application System (TEAS). In a TEAS application, only the goods listed in the proper field can be considered for the identification of goods and broadening the scope of the identification is not permitted. In Win-D-Fender’s application, the only goods listed in the “Identification” field were “musical instruments.” Win-D-Fender argued that its application included a miscellaneous statement reading, “For Musical Instrument Accessories namely a wind guard mounted to a flute.” The Board determined, however, that the description was not in the proper field and therefore was not considered in the identified goods. The Board explained that the TEAS Plus instructions warn applicants to not use the TEAS Plus “Identification” field if it does not contain an accurate listing of the goods and services and to instead use the TEAS Standard filing option. The Board noted that although the identification of “musical instruments” may have been a mistake, it is settled that an established identification cannot later be expanded. The Board concluded that Win-D-Fender was limited to amendments that would narrow or clarify the type of “musical instruments.”

Win-D-Fender also argued that musical instrument accessories would fall under the general umbrella of musical instruments. The Board stated that while musical instruments may use accessories, the accessories themselves are not musical instruments and are not encompassed in the “musical instrument” class. The Board, therefore, denied the motion to amend the identification of goods.

The Board next considered Fender’s motion for summary judgment on the ground of nonuse. An application based on use of the mark in commerce is void if the mark was not used in commerce in connection with the goods identified in the application. As the Board had already decided, Win-D-Fender’s mark was limited to musical instruments and did not include accessories. Fender specifically pointed to an interrogatory response in which Win-D-Fender stated that the products sold under the [...]

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“Open Sesame” Without Translation Won’t Open Door to Trademark Registration

by | Feb 2, 2023 |

The Trademark Trial & Appeal Board (Board) addressed, for the first time, whether an applicant is required to submit an English translation for a word that is created by spelling out the pronunciation of Chinese characters using Latin characters. The Board concluded that the mark required an English translation and upheld the examining attorney’s refusal to register the mark because there was no translation submitted. In re Advanced New Technologies Co., Ltd., Application No. 86832288 (TTAB Jan. 12, 2023) (Bergsman, Taylor, Heasley, ATJs).

Advanced New Technologies sought to register the mark ZHIMA for several goods and services classes. Advanced has a co-pending application for a mark using Chinese characters, where Advanced stated that “[t]he non-Latin characters in the mark translate to ‘ZHIMA’ and this means ‘SESAME’ in English.” According to Advanced, “the Chinese characters [] pronounced ZHIMA mean ‘sesame,’ but ‘Zhima’ itself has no meaning.” The application for ZHIMA was assigned to Advanced by Alibaba Group Holding Limited. Ali Baba is the hero of an Arabian Nights story who opens the door to a thieves’ den using the magical phrase “open sesame.” The use of the Chinese word for “sesame” on goods thus creates an impression that these goods and services bring customers access to something previously unattainable.

Under 37 C.F.R. § 2.32(a)(9), a trademark application must contain an English translation when the mark includes non-English wording. To determine whether a mark includes non-English wording and its meaning, the examining attorney may use dictionaries and search engines. If the examining attorney discovers that the mark contains non-English wording, the applicant must submit a translation. Following this statutory framework, the examining attorney in this case relied on the Chinese English Pinyin Dictionary, which translates “zhi ma” as “sesame” in English and required Advanced to submit a translation that “ZHI MA” means “sesame” in English.

Advanced argued that individuals fluent in English and Chinese would not transliterate “ZHI MA” back into its Chinese character counterparts, which actually do translate to “sesame.” In response, the examining attorney provided at least eight dictionary definitions where “zhima” was defined as “sesame.” Advanced then argued that the dictionaries were defining the Chinese characters, not the English transliteration because “ZHIMA” itself has no meaning in English.

The examining attorney modified the required translation statement to state that “ZHIMA is a transliteration of Chinese characters that means ‘sesame’ in English.” However, Advanced still refused to submit a translation, claiming that it was not required because there are no Chinese characters in the ZHIMA mark and the meaning of the Chinese characters cannot attach to a mark without them. The examining attorney provided information from many news articles where “zhima” was translated as “sesame.” For example, in articles referencing a Chinese version of Sesame Street, “Sesame” was translated as “Zhima.” The examining attorney also produced multiple websites discussing “zhima” products, all of which were sesame products.

The Board found that the many examples where “zhima” was translated as “sesame” by third parties demonstrated that ZHIMA was not an original [...]

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Your Gang Did What!? No Matter—No Forfeiture of IP

by | Jan 26, 2023 |

In a unique case blending intellectual property and criminal law, the US Court of Appeals for the Ninth Circuit agreed that a district court properly exercised jurisdiction over a motorcycle club and upheld the lower court’s finding that the club did not have to forfeit its collective membership marks. United States v. Mongol Nation, Case Nos. 19-50176; -50190 (9th Cir. Jan. 6, 2023) (Ikuta, Forrest, Thomas, JJ.)

Mongol Nation is an unincorporated association comprised of Mongols Gang members and, per the district court, is “a violent, drug trafficking organization.” After a jury found Mongol Nation guilty of both substantive and conspiracy violations of the Racketeer Influenced and Corrupt Organizations (RICO) Act, the US government sought forfeiture of Mongol Nation’s rights in its collective membership marks—a category of “intellectual property used to designate membership in an association or other organization”—and specific property displaying those marks. A jury granted both forfeiture requests, but the district court granted forfeiture only of specific tangible property, not the marks themselves. The district court cited the First and Eighth Amendments: The First protected Mongol members’ rights to display their marks, and the Eighth prohibited the disproportionate remedy of forfeiture of marks that have “immense tangible” value to Mongol members. The government then filed another forfeiture application proposing that Mongol Nation forfeit its exclusive rights in the marks, meaning that Mongol Nation could not prevent others from using them, even in commerce, but that they would not transfer to or vest in the United States. The district court again denied this motion on First and Eighth Amendment grounds.

Both parties appealed, presenting two issues to the Ninth Circuit. Mongol Nation challenged the district court’s jurisdiction to hear the case because Mongol Nation is not a “person” under RICO. The government challenged the district court’s denial of forfeiture of the marks.

The Ninth Circuit summarily dealt with the first issue, noting that Mongol Nation did not properly raise this argument at the district court. The Court was not persuaded by Mongol Nation’s three-part argument that RICO defines an entity to be a “person” only if the entity has a legal interest in property, California only allows unincorporated associations to hold property if the association has a “lawful” purpose, and the indictment describes Mongol Nation as existing for an “unlawful purpose.” The Court found that the association misstated the indictment allegations, which said Mongol Nation’s purposes were “not limited to” the enumerated unlawful ones. Thus, because this argument was not properly preserved and because the RICO “person” definition did in fact encompass Mongol Nation, the Court found that the district court properly exercised jurisdiction.

The Ninth Circuit also affirmed the district court on the forfeiture issue, albeit for different reasons. Without reaching the district court’s First or Eighth Amendment logic, the Ninth Circuit stated that “RICO’s plain text” made the government’s forfeiture request “a legal impossibility.” The Court explained that, following a criminal conviction, a statute must enable property forfeiture. RICO does have such a penalty provision that encompasses [...]

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Deleting Goods from Registration Subject to Cancellation During Audit May Result in Adverse Judgment

by | Jan 26, 2023 |

The Trademark Trial & Appeal Board (Board) addressed, for the first time, whether the deletion of goods and services as a result of a post-registration audit during a cancellation proceeding triggers Trademark Rule 2.134 and found that it does. The Board required the respondent to show cause as to why its deletion of certain goods from the challenged registration should not result in an adverse judgment. Ruifei (Shenzhen) Smart Technology Co., Ltd. v. Shenzhen Chengyan Science and Technology Co., Ltd., Cancellation No. 92077931 (TTAB Jan. 12, 2023) (Lykos, Lynch, Larkin, ATJ)

Ruifei (Shenzhen) Smart Technology petitioned to cancel a trademark that was registered to Shenzhen Chengyan Science and Technology Co., Ltd. (Chengyan) based on abandonment and fraud. Ruifei thereafter filed a motion for leave to amend its pleadings and concurrently filed a motion for partial summary judgment. Finding that Chengyan did not contest the motion for leave to amend, the Board granted Ruifei’s motion and accepted the proposed amended petition to cancel. The summary judgment motion, however, was deferred, pending Chengyan’s response to the instant order.

After the cancellation proceeding was initiated, Chengyan filed a Section 8 Declaration of Use in connection with the contested registration and received a post-registration office action audit. In response to the audit, Chengyan deleted some of the goods from the contested registration’s identification.

Ruifei mentioned the amendment to the contested registration in its motion for partial summary judgment. The Board, having been made aware of the deletion of goods, held that the amendment raised new issues requiring Chengyan’s input before it could consider the motion for partial summary judgment.

Without the written consent of a petitioner, a respondent’s deletion of goods or services from a registration subject to a pending cancellation action typically would result in judgment against the respondent under Trademark Rule 2.134. The purpose of this rule is to prevent respondents in cancellation proceedings from avoiding judgment by cancelling certain goods or services to render the cancellation action moot.

Trademark Rule 2.134(b) provides respondents with the opportunity to explain why certain goods or services were cancelled under Section 8 to avoid judgment being entered against them:

After the commencement of a cancellation proceeding, if it comes to the attention of the . . . Board that the respondent has permitted its involved registration to be cancelled under section 8 . . . an order may be issued allowing respondent . . . to show cause why such cancellation . . . should not be deemed to be the equivalent of a cancellation by request of respondent without the consent of the adverse party and should not result in entry of judgment against respondent.

The Board had not previously considered a situation in which goods or services were deleted as a result of a post-registration audit but held that the “same concerns . . . and [] policies underlying Trademark Rule 2.134(b) apply.” Accordingly, the Board granted Chengyan 20 days to file a response showing why its deletion of certain goods should not [...]

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I Know That Brand . . . Or Do I? Reviewing the Eleventh Circuit’s Likelihood of Confusion Analysis

by | Jan 26, 2023 |

The US Court of Appeals for the Eleventh Circuit reversed and remanded a district court’s summary judgment ruling finding no likelihood that consumers might be confused as to any relationship between competitors operating in the same state, in similar trade channels and using a mark having the same primary word component. The Court held that a reasonable factfinder could determine that there was a likelihood of confusion between the parties’ marks as used in commerce. FCOA LLC v. Foremost Title & Escrow Services LLC, Case No. 19-13390 (11th Cir. Jan. 12, 2023) (Branch, Grant, Tjoflat, JJ.)

FCOA is an insurance company that has been selling and marketing insurance policies using FOREMOST marks since 1952. Foremost is a shell company selling title insurance on behalf of a law firm. Both parties operate in Florida. Seven months after Foremost started using its FOREMOST mark, FCOA sent Foremost a cease-and-desist letter. Foremost disputed the trademark infringement allegations and denied having any knowledge of FCOA or FCOA’s FOREMOST marks. The district court denied FCOA’s summary judgment motion and granted Foremost’s cross-motion for summary judgment, holding that FCOA failed to show a likelihood of confusion between the marks. FCOA appealed.

The Eleventh Circuit reviewed the district court decision de novo. Since there was no dispute that FCOA’s marks were valid, the Court focused its trademark infringement analysis on whether Foremost’s FOREMOST mark was likely to cause consumer confusion. It did so by analyzing its eight likelihood of confusion factors:

  • Actual confusion is the most important factor in the analysis. The Eleventh Circuit found no evidence that consumers actually confused the parties’ marks in the period between Foremost’s allegedly infringing acts and the lawsuit filing. Therefore, this factor weighed against a likelihood of confusion.
  • A mark’s strength/distinctiveness is the second most important factor because it analyzes the scope of the mark’s protection. The Eleventh Circuit found that FCOA’s FOREMOST mark was distinctive because, although the word mark in isolation is descriptive, it achieved secondary meaning through consumer recognition and commercial strength. The Court did not find Foremost’s list of likely inactive businesses using FOREMOST to be compelling rebuttal evidence. Therefore, this factor weighed in favor of a likelihood of confusion.
  • Similarity of the marks is relevant because the likelihood of confusion increases as the marks share more overall similarities. The Eleventh Circuit focused on the distinctive parts of the marks, noting that both logos feature FOREMOST prominently in bold, have two lines of text and are similarly centered and stylized. While there are differences in the logo fonts and colors, the Court determined that this factor still weighed in favor of confusion because consumers are unlikely to be discerning about these differences.

  • Similarity of the products that the marks represent is relevant in determining whether consumers think the marks originate from a single source. The Eleventh Circuit determined that [...]

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On the Border of Art and Trademark: First Amendment Trumps the Lanham Act

by | Dec 8, 2022 |

The US Court of Appeals for the Eleventh Circuit weighed trademark rights against free speech considerations and found that the First Amendment protected use of an artistic work that was not deliberately misleading. MGFB Properties Inc. et al. v. 495 Productions Holdings LLC et al., Case No. 21-13458 (11th Cir. Nov. 29, 2022) (Luck, Brasher, Hull, JJ.) (Brasher, J., concurring).

The suit was brought by MGFB Properties, Flora-Bama Management and Flora-Bama Old S.A.L.T.S. (collectively, the plaintiffs). The plaintiffs own and operate the Flora-Bama Lounge, Package and Oyster Bar on the Florida-Alabama border. The lounge has been in business since 1964 and is well known in the region. The plaintiffs registered their trademark FLORA-BAMA in 2013.

Viacom and 495 Productions (collectively, the defendants) produce reality television series, such as the hit 2009 series Jersey Shore. In light of Jersey Shore’s success, the defendants produced several spinoffs. In 2016 the defendants decided to develop a new spinoff based on “southern beach culture” and chose the term “Floribama” to describe “relaxing Florida beaches with the down-home Southern vibe of Alabama.” The defendants were aware of the name’s connection to the Florabama Lounge but used the term regardless to identify a specific stretch of the Gulf Coast (the Florida and Alabama coasts) and inserted dialogue into the show to explain the term. The show’s logo emphasized its connection to the Jersey Shore franchise:

The plaintiffs argued that the defendants’ use of “Floribama” was a violation of the Lanham Act and caused unfair confusion and damage to their brand. The district court granted summary judgment for the defendants. Plaintiffs appealed.

The Eleventh Circuit upheld the district court’s judgment that the defendants’ First Amendment rights as the creators of an artistic work outweighed the plaintiffs’ interest in their trademark and in avoiding confusion around their brand: “[c]reative works of artistic expression are firmly ensconced within the protections of the First Amendment.” In reaching its outcome, the Court applied the 1989 Rogers v. Grimaldi test.

Under the first prong of the Rogers test, “an artistically expressive use of a trademark will not violate the Lanham Act unless the use of the mark has no artistic relevance to the underlying work whatsoever.” Here, the Eleventh Circuit found that the defendants’ use of the term “Floribama” to describe the geographic area featured in Floribama Shore and the subculture of that region satisfied the first element of the Rogers test. The Court held that it was sufficient for the defendants’ use of “Floribama” to be relevant to their show, even if the term was not “necessary” to production of the show.

Under the second prong of the Rogers test, the Eleventh Circuit found that the defendants’ use of “Floribama” was not explicitly misleading “as to the source or content of the [...]

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Court Uncorks New Way to Serve Trademark Complaints

by | Nov 29, 2022 |

The US Court of Appeals for the Ninth Circuit concluded that Section 1051(e) of the Lanham Act permits a plaintiff in a district court case to serve a complaint against a foreign defendant via the Director of the US Patent & Trademark Office (PTO). San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., Ltd., Case No. 21-56036 (9th Cir. Nov. 14, 2022) (Siler, Callahan, Thomas, JJ.)

San Antonio Winery is a Los Angeles-based winery best known for its Stella Rosa brand of wines. The winery is owned and operated by the Riboli family. San Antonio has registered the trademarks RIBOLI and RIBOLI FAMILY, which it has used since at least 1998 to market its wines and other products.

Jiaxing is a Chinese company that has sold products using the Riboli name. In 2018, Jiaxing registered the mark RIBOLI for use in connection with articles of clothing and shoes. In 2020, Jiaxing applied to register the mark RIBOLI for use with additional types of products, including wine pourers, bottle stands, containers, cocktail shakers, dishware and various other kitchen and household items.

After learning that Jiaxing was using the Riboli name to sell products in the United States, San Antonio filed a complaint asserting Lanham Act claims for trademark infringement, trademark dilution and false designation of origin, as well as related state-law claims. San Antonio also sought an injunction prohibiting Jiaxing from using the RIBOLI mark in connection with its products, an order canceling Jiaxing’s 2018 registration of the RIBOLI mark, and an order either directing Jiaxing to abandon its 2020 application to register RIBOLI for additional uses or prohibiting the PTO from granting the application.

Because Jiaxing is a Chinese company, San Antonio’s service of process was governed by rules for serving parties abroad, such as by the Hague Convention. Concerned with the amount of time it might take to effect service under the Hague Convention, San Antonio instead sought to serve Jiaxing under Section 1051(e) of the Lanham Act, which applies to foreign domiciliaries who apply to register a trademark. Section 1051(e) states that if a trademark applicant is not domiciled in the United States, the applicant may designate the name and address of a person in the United States who may be served with notices or processes in proceedings affecting the mark. If the designated person cannot be found at the address, the notices or processes may be served on the PTO Director.

Seeking to avail itself of Section 1051(e), San Antonio inquired whether the US-based lawyer who had represented Jiaxing in connection with its trademark applications would accept service on Jiaxing’s behalf. When the lawyer did not respond, San Antonio served the district court complaint on the PTO Director, who then sent a letter to Jiaxing confirming service of process was effectuated pursuant to Section 1051(e).

After Jiaxing did not appear to defend itself in the action, San Antonio filed a motion for default judgment. The district court denied the motion on the ground that Jiaxing had not [...]

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First Amendment Punches Out Alleged Lanham Act Violation

by | Nov 29, 2022 |

Addressing the balance between trademark rights under the Lanham Act and the First Amendment right to protected expression, the US Court of Appeals for the Ninth Circuit affirmed a district court judgment finding that the defendant’s use of the term “Punchbowl” was not a Lanham Act violation because it was expressive and not misleading as to its source. Punchbowl, Inc. v. AJ Press, LLC, Case No. 21-55881 (9th Cir. Nov. 14, 2022) (Ownes, Bress, Fitzwater, JJ.)

Punchbowl is an online communications company that provides “online events and celebration invitations and greeting cards” as part of its subscription-based service. Punchbowl has used the mark Punchbowl® since 2006 and the mark was registered with the US Patent & Trademark Office in 2013. Punchbowl describes itself as “The Gold Standard in Online Invitations & Greeting Cards,” and uses the logo of a punch bowl ladle:

Punchbowl filed suit claiming that AJ Press infringed on Punchbowl’s mark through its subscription-based online news publication Punchbowl News. Punchbowl News covers “insider” political topics and reports on events in Washington, DC, and derives its name from the use of the term “punchbowl” by the Secret Service to refer to the US Capitol building. As such, the Punchbowl News logo comprises of an overturned image of the US Capitol filled with purple punch and the slogan “Power. People. Politics.”

AJ Press argued that its use of the term “Punchbowl” was protected under the First Amendment and did not violate the Lanham Act. The district court granted summary judgment to AJ Press, concluding that its use of the name “Punchbowl” did not give rise to liability because it constituted protected expression and was not explicitly misleading as to its source. Punchbowl appealed.

Traditionally, the likelihood of confusion test is used for claims brought under the Lanham Act. When artistic expression is at issue, however, that test fails to account for the full weight of the public’s interest in free expression. If the product involved is an expressive work, courts generally apply a gateway test, grounded in background First Amendment concerns, to determine whether the Lanham Act applies. One approach was set forth in the Second Circuit’s 1989 decision in Rogers v. Grimaldi to determine whether First Amendment concerns were strong enough to outweigh the need to protect a mark. The Rogers test requires the defendant to first “make a threshold legal showing that its allegedly infringing use is part of an expressive work protected by the First Amendment.” Once this threshold is satisfied, the Lanham Act will not apply unless the plaintiff can establish that “the defendant’s use of the mark (1) is not artistically relevant to the work or (2) explicitly misleads consumers as to the source or the content of the [...]

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