90 F.4th 1022
9th Cir.2024Background
- Punchbowl, Inc. operates an online invitations and greeting cards business using the registered trademark "Punchbowl."
- AJ Press, LLC operates "Punchbowl News," a subscription-based political news publication, using the name "Punchbowl" referencing the U.S. Capitol's nickname.
- Both companies filed trademark registrations for their respective uses of "Punchbowl."
- Punchbowl, Inc. sued AJ Press for trademark infringement and unfair competition under the Lanham Act, plus related state law claims.
- The district court granted summary judgment to AJ Press, applying the Rogers test to protect AJ Press's use as expressive and not explicitly misleading.
- Following the Supreme Court’s decision in Jack Daniel’s, the Ninth Circuit reconsidered its approach regarding the application of Rogers to "use of a mark as a mark."
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does Rogers test preclude Lanham Act liability for AJ Press? | Rogers shouldn't apply to commercial branding | Rogers protects expressive/multi-meaning use of "Punchbowl" | Rogers does not apply where mark used as source identifier |
| Is AJ Press's use of "Punchbowl" protected expression? | Mark used to identify/brand its own services | Use is noncommercial, refers to U.S. Capitol, is expressive | Expressive use does not insulate source usage from infringement analysis |
| Should the traditional likelihood-of-confusion test apply? | Yes; confusion remains possible | No; marks are in different markets, highly unlikely to confuse | Yes, likelihood-of-confusion test applies |
| Is summary judgment for AJ Press correct after Jack Daniel’s? | No; case should proceed under new standard | Yes; different context and added expressive content | No; must remand for likelihood-of-confusion analysis |
Key Cases Cited
- Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (establishes heightened First Amendment protection for certain expressive uses of trademarks)
- Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002) (applied Rogers test to song titled "Barbie Girl")
- AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (outlines 8-factor likelihood-of-confusion test for infringement)
- Dreamwerks Prod. Grp. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1998) (standard for consumer confusion in trademark cases)
- Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023) (Rogers test does not apply when mark is used as a source identifier)