PUNCHBOWL, INC. V. AJ PRESS, LLC, 52 F.4th 1091

Background:

Punchbowl, Inc. is an online event/party-planning technology company that registered the trademark PUNCHBOWL in 2013 for invitation, party-planning, and related online services.
AJ Press, LLC (co‑founded by Jake Sherman, Anna Palmer, and John Bresnahan) launched Punchbowl News, a subscription D.C. insider political newsletter/media brand that uses the name “Punchbowl,” a Capitol nickname, plus a slogan and logo.
Punchbowl sued AJ Press under the Lanham Act (trademark infringement, unfair competition) and related state claims; the district court granted summary judgment for AJ Press, applying the Rogers test and denying Punchbowl’s Rule 56(d) discovery continuance request.
On appeal, Punchbowl argued Rogers should not apply to a commercial brand name and that survey evidence of confusion mattered; AJ Press argued its use was expressive and not explicitly misleading under Rogers.
The Ninth Circuit affirmed: it held Punchbowl News’s use is expressive, Rogers applies, Punchbowl News is not explicitly misleading as to source, survey evidence is irrelevant to the Rogers inquiry, and the Rule 56(d) denial was not an abuse of discretion.

Issues:

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether Rogers gateway test applies to a commercial enterprise brand name	Rogers does not extend to a brand name used as a commercial enterprise; such branding is insufficiently expressive	The name of a news publication (brand/title) conveying ideas and point of view is expressive and falls within Rogers	Rogers applies: Punchbowl News’s name/brand is expressive and entitled to Rogers protection
Whether AJ Press’s use is artistically relevant or explicitly misleading under Rogers	Use of the same mark as a brand implies source-identification; AJ Press’s use could mislead consumers	AJ Press’s use has above-zero artistic relevance and is used in a different market with added expressive elements (News, slogan, logo, founders)	First prong easily met (low threshold). Second prong not met: use is not explicitly misleading as to source
Relevance of survey evidence / actual consumer confusion to Rogers analysis	Surveys showing consumer confusion are relevant to whether uses are similar and misleading	Surveys measure impact, not the junior user's behavior; Rogers focuses on the nature of the use; such evidence is not dispositive	Survey evidence of confusion is not controlling or generally relevant to the Rogers explicit‑misleading legal test
Whether district court abused discretion by denying Rule 56(d) continuance for discovery	Discovery into AJ Press’s knowledge, actual confusion, and extent of source-identifying use was necessary	Prior Ninth Circuit precedents show those discovery topics are irrelevant to Rogers; record was sufficient	Denial was not an abuse of discretion; requested discovery was not material under Rogers

Key Cases Cited

Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (established the Rogers gateway test protecting expressive uses from Lanham Act claims)
Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002) (adopted Rogers in the Ninth Circuit)
Twentieth Century Fox Television v. Empire Distrib. Inc., 875 F.3d 1192 (9th Cir. 2017) (applied Rogers to umbrella brands/titles and promotional uses)
Gordon v. Drape Creative, Inc., 909 F.3d 257 (9th Cir. 2018) (analyzed Rogers balancing and the role of added expressive content)
VIP Prods. LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170 (9th Cir. 2020) (found nontrivial expressive content in a commercial product)
Dr. Seuss Enters., L.P. v. ComicMix LLC, 983 F.3d 443 (9th Cir. 2020) (affirmed high bar for "explicitly misleading" under Rogers)
Brown v. Electronic Arts, Inc., 724 F.3d 1235 (9th Cir. 2013) (explained survey evidence relates to impact, not the junior user's behavior, and is not dispositive under Rogers)
E.S.S. Ent. 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) (applied Rogers to uses within the body of expressive works)
Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003) (held titles and expressive works can merit Rogers protection)