This week on the ninth: Trademarks and Service | Morrison & Foerster LLP – Left Coast Appeals

This week, the Ninth Circuit digs into the Lanham Act, addressing what happens when two companies have a similar name and interpreting the law’s provision to serve foreign registrants.


The Court dismisses a Lanham law challenge to an “expressive” brand name.

The panel: Owens, Bress and Fitzwater JJ. (ND Tex.), Bress J. writing the opinion.

Climax : “The word ‘Punchbowl’ connotes a talkative setting (eg, standing around the punchbowl) and, in the context of political reporting from Washington, DC, the bearer of ‘buzz’ tales about political events. The name “Punchbowl” also reflects a fiercer, “punchy” tone consistent with the nature of the fast-paced and tumultuous political topics AJ Press reports on. If a rubber dog toy is expressive under roger, we have little doubt that AJ Press’s use of the Punchbowl trademark is as well. (quote omitted)

Background: Punchbowl Inc. sued AJ Press under the Lanham Act for trademark infringement and unfair competition. Punchbowl Inc. helps create invitations and greeting cards online for parties and other events. AJ Press owns News, which provides information about Beltway policy online. District court granted AJ Press motion for summary judgment

Results: The Ninth Circuit confirmed. As the Court explained, while courts generally apply a “likelihood of confusion” test under the Lanham Act, when a case involves “artistic expression”, the Ninth Circuit first applies “a test gateway” (called the “roger” test) “based on substantive concerns of the First Amendment, to determine whether the Lanham Act applies.” The Court rejected Punchbowl Inc.’s argument that this roger test was inapplicable where, as here, the brand name of a commercial enterprise was at issue. Rather, the Court held that the only issue was whether the work (including a brand name) was “expressive”. Here, the Court found that AJ Press’s use of the term “Punchbowl” met this requirement because it conjured up “DC’s insider view of its news.” The relevant considerations of the First Amendment have not been diminished by the facts which News consisted largely of news and opinion rather than artistic expression, that “Punchbowl” was only used as a name or title, or that AJ Press could have chosen a name other than “Punchbowl”.

The Court then proceeded to apply the roger test, which “requires the plaintiff to demonstrate that the defendant’s use of the mark is (1) artistically irrelevant to the underlying work or (2) explicitly misleads consumers as to source or the content of the work”. The Court rejected Punchbowl Inc.’s assertions that it could satisfy the second part of this test (Punchbowl Inc. did not argue that it could satisfy the first). The Court ruled News used ‘Punchbowl’ in a different way than Punchbowl Inc. As the Court explained, it was not enough for ‘both parties to use the Mark ‘as a mark’ for ‘online communication services’ provided to ‘ consumers of online services. the parties had used a “common word” to “describe two different companies doing very different things”. And, continues the Court, News had also added to the expressive content of the “Punchbowl” brand by adding the word “News” and creating a logo and tagline that linked the name to Newsparticular content. This News also often highlighting the names of its founders further diminished the possibility that consumers might be misled. Additionally, the Court found that Punchbowl Inc’s investigative evidence purporting to show consumers had been misled was irrelevant – although such evidence may help pass the ordinary “likelihood of confusion” test. of the Lanham Act, they did not affect the roger investigating whether the use of the mark is “explicitly misleading”.


The Court finds that Section 1051(e) of the Lanham Act provides a means of serving defendants in trademark court proceedings and in administrative proceedings before the United States Patent and Trademark Office.

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

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

Background: San Antonio Winery is a Los Angeles winery owned by the Riboli family. It owns the registered trademarks “RIBOLI” and “RIBOLI FAMILY”, which it has used since at least 1998 to market wines and other products. In 2018, the Chinese company Jiaxing Micarose Trade Co., Ltd registered the RIBOLI brand to market clothing and shoes. Two years later, Jiaxing applied to register the RIBOLI trademark for use with additional products, including various household items similar to products sold by San Antonio at its wineries and restaurants. San Antonio sued for trademark infringement, dilution, and misrepresentation under the Lanham Act, and sought an injunction restraining Jiaxing from using the RIBOLI trademark and canceling 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 which provides that if a trademark plaintiff “is not domiciled in the United States, the plaintiff may designate, by a document filed in the [PTO], the name and address of a person residing in the United States on whom notices or process relating to the mark may be served. If such designation is made, then “notices or process may be served on the person so designated by leaving or sending to such person a copy [of the notices or process] at the address indicated in the last designation thus filed. But if “the person thus designated cannot be found at the address indicated in the last designation, or if the registrant does not designate . . . a person . . . on whom notices or process may be served in proceedings relating to the mark, such notices or process may be served on the Director [of the PTO].” San Antonio served as the PTO director, who sent copies of the documents to Jiaxing.

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

Results: The Ninth Circuit is released and returned. Relying on the plain text of the law, the Court interpreted the term “proceedings affecting the mark” to include court proceedings. The Court explained that “procedures” generally refer to “the conduct of legal business before a court or judicial officer”. And court proceedings can “affect” a trademark because the Lanham Act grants courts the power to assign, cancel and restore trademark registrations. The Act’s reference to the meaning of “notices or process” confirmed this conclusion because “process” relates only to judicial proceedings, not administrative proceedings before the PTO.

The Ninth Circuit disagreed with several district courts that have held that Section 1051(e) applies only to administrative proceedings. The Court was unconvinced by the provision’s original placement alongside the registration requirements, and not the court process provisions, as the provision originally required the appointment of a duty officer as a step mandatory in trademark registration. The Court found the legislative history “obscure at best”, potentially pointing both ways, and also concluded that other laws using different language were “of little value”. Finally, the Court explained that this interpretation was not contrary to the Hague Service Convention, since its procedures apply only when the mode of service in question “requires[s] transmission of documents abroad. Because “[s]service under section 1051(e) occurs at the national level”, it “is not within the scope of the Convention”.

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Elisha A. Tilghman