In Brief:  The use of a word for an expressive work is not trademark infringement.

Here’s What Happened:

Punchbowl Inc. is an online party and event planning service website, PUNCHBOWL, which creates invitations and greeting cards. AJ Press, LLC owns and operates PUNCHBOWL NEWS, a subscription-based online news publication that provides articles, podcasts, and videos about American politics, from a Washington, D.C. insider's perspective. Punchbowl sued AJ for trademark infringement.

The Ninth Circuit Court of Appeals affirmed the district court’s grant of summary judgment in favor of AJ.

The Ninth Circuit held that the issue in this case is really about freedom of expression and not trademark infringement. AJ had adopted the name “Punchbowl” because that’s how the Secret Service refers to the U.S. Capitol. AJ wanted to evoke the impression that it was a news source for information about “Power.People.Politics” in the U.S.  AJ promotes itself as a trusted news source by prominently referencing its founding journalists and authors, Jake Sherman, Anna Palmer, and John Bresnahan.

Because AJ’s PUNCHBOWL NEWS is an expressive work, the courts apply a “gateway” test grounded in First Amendment to see if trademark law applies. The “gateway” test is often referred to by the name of the case where the test was first applied, namely Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). AJ’s use of the name is (1) artistically relevant; and (2) doesn’t mislead consumers as to the source of content of the work. So, AJ’s PUNCHBOWL NEWS passed the Rogers test for an expressive work.

Next the Ninth Circuit discussed how the parties used the word “Punchbowl”. This test came out in AJ’s favor too. The parties use the word differently. Punchbowl uses it to promote its goods and services. AJ uses it to promote its on-line content. “In short, no reasonable buyer would believe that a company that operates a D.C. insider news publication is related to a ‘technology company’ with a ‘focus on celebrations, holidays, events and memory-making.’"

Why You Should Know This: Trademark infringement can’t be used to limit freedom of expression. In the end, the real test is whether a consumer could be confused by the use of someone’s trademark in an expressive work.

Case Information: Punchbowl, Inc. v. AJ Press, LLC, 52 F.4th 1091 (9th Cir. 2022).

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