Keeping Tabs on the Ninth Circuit
November 18, 2022 - This Week at the Ninth

This Week at the Ninth: Trademarks and Service

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This week, the Ninth Circuit digs into the Lanham Act, addressing what happens when two businesses have a similar name and interpreting the statute’s provision for serving foreign registrants.

The Court rejects a Lanham Act challenge to an “expressive” brand name.

The panel:  Judges Owens, Bress, and Fitzwater (N.D. Tex.), with Judge Bress writing the opinion.

Key highlight: The word ‘Punchbowl’ connotes a gossipy setting (e.g., standing around the punchbowl), and, in the context of Washington, D.C. political reporting, talebearer ‘buzz’ about political happenings. The name ‘Punchbowl’ also reflects a more spirited, ‘punchy’ tone consistent with the nature of the fast-moving and tumultuous political topics on which AJ Press is reporting. If a rubber dog toy is expressive under Rogers, we have little doubt that AJ Press’s use of the Punchbowl Mark is as well.” (Citation omitted)

Background: Punchbowl Inc. sued A.J. Press under the Lanham Act for trademark infringement and unfair competition. Punchbowl Inc., helps create online invitations and greeting cards for holidays and other events. A.J. Press owns Punchbowl News, which provides online news about Beltway politics. The district court granted A.J. Press’s motion for summary judgment

Result: The Ninth Circuit affirmed. As the Court explained, while courts generally apply a “likelihood-of-confusion” test under the Lanham Act, where a case involves “artistic expression,” the Ninth Circuit first applies “a gateway test” (called the “Rogers” test) “grounded in background First Amendment concerns, to determine whether the Lanham Act applies.” The Court rejected Punchbowl Inc.’s argument that this Rogers test was inapplicable where, as here, a commercial enterprise’s brand name was at issue. Rather, the Court held, the only question was whether the work (including a brand name) was “expressive.” Here, the Court concluded, A.J. Press’s use of the term “Punchbowl” satisfied that requirement because it evoked “the D.C. insider perspective of its news material.” The relevant First Amendment considerations were not diminished by the facts that Punchbowl News consisted largely of news and opinion rather than artistic expression, that “Punchbowl” was used only as a name or title, or that A.J. Press could have chosen a name other than “Punchbowl.”

The Court then proceeded to apply the Rogers test, which “requires the plaintiff to show that the defendant’s use of the mark is either (1) not artistically relevant to the underlying work or (2) explicitly misleads consumers as to the source or content of the work.” The Court rejected Punchbowl Inc.’s contentions that it could satisfy the second part of this test (Punchbowl Inc. not having argued it could meet the first). The Court held Punchbowl News used “Punchbowl” in a different manner than Punchbowl Inc. As the Court explained, it was insufficient that “both parties use the Mark ‘as a brand’ for ‘online communications services’ provided to ‘consumers of online services.’” Rather, the parties had used a “common word” to “describe two different enterprises that do very different things.” And, the Court continued, Punchbowl News had also added to the expressive content of the “Punchbowl” mark by adding the word “News” and creating a logo and slogan that connected the name to Punchbowl News’s particular content. That Punchbowl News also often highlighted its founders’ names further diminished the possibility that consumers might be misled. Moreover, the Court concluded, Punchbowl Inc’s survey evidence purporting to show consumers were misled was not relevant—while such evidence might help satisfy the Lanham Act’s ordinary “likelihood-of-confusion” test, it did not bear on the Rogers inquiry into whether use of the mark is “explicitly misleading.”

The Court holds that Section 1051(e) of the Lanham Act provides a means of serving defendants in both court proceedings affecting a trademark and administrative proceedings before the U.S. Patent and Trademark Office.

The panel:  Judges Siler (6th Cir.), Callahan, and H.A. Thomas, with Judge Thomas writing the opinion.

Key highlight: “Because court proceedings are ‘proceedings,’ and because those proceedings can ‘affect’ a trademark, we conclude that Section 1051(e) provides a means of serving process in court.”

Background: San Antonio Winery is a Los Angeles winery owned by the Riboli family. It has registered trademarks in “RIBOLI” and “RIBOLI FAMILY,” which it has used since at least 1998 to market wines and other products. In 2018, Chinese company Jiaxing Micarose Trade Co., Ltd registered the mark RIBOLI to market clothing and shoes. Two years later, Jiaxing applied to register the mark RIBOLI for use with additional products, including various household items similar to products sold by San Antonio at its wineries and restaurants. San Antonio filed suit for trademark infringement, dilution, and false designation of origin under the Lanham Act, and sought an injunction prohibiting Jiaxing from using the mark RIBOLI and cancelling its registrations.

Concerned that service under the Hague Service Convention would take too long, San Antonio sought to serve Jiaxing under a provision of the Lanham Act that provides that if a trademark applicant “is not domiciled in the United States the applicant may designate, by a document filed in the [PTO], the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark.” If such a designation is made, then “notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy [of the notices or process] at the address specified in the last designation so filed.” But if “the person so designated cannot be found at the address given in the last designation, or if the registrant does not designate . . . a person . . . on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director [of the PTO].” San Antonio served the PTO director, which sent Jiaxing copies of the documents. 

The district court denied San Antonio’s motion for default judgment because it was unclear whether Section 1051(e) provides a proper means of serving defendants in court proceedings, but certified an immediate interlocutory appeal to resolve that question.

Result: The Ninth Circuit vacated and remanded. Relying on the plain text of the statute, the Court interpreted the phrase “proceedings affecting the mark” to include court proceedings. The Court explained that “proceedings” generally refers to “conducting juridical business before a court or judicial officer.” And court proceedings can “affect” a trademark because the Lanham Act grants courts authority to award, cancel, and restore trademark registrations. The statute’s reference to the service of “notices or process” confirmed that conclusion because “process” relates only to court proceedings, not administrative proceedings before the PTO.

The Ninth Circuit disagreed with several district courts that have held that Section 1051(e) applies only in administrative proceedings. The Court was unpersuaded by the provision’s original placement alongside registration requirements, not court proceeding provisions, because the provision originally required designation of a service agent as a mandatory step in registering a mark. The Court deemed the legislative history “murky at best,” potentially pointing both ways, and also concluded that other statutes using different language were “of little value.” Finally, the Court explained this reading did not conflict with the Hague Service Convention because its procedures apply only when the method of service at issue “require[s] the transmittal of documents abroad.” Because “[s]ervice under Section 1051(e) occurs domestically,” it “falls outside the scope of the Convention.”