We previously discussed the United States Supreme Court's June 2023 Jack Daniel's Properties, Inc. v. VIP Products, LLC decision, which altered the way the "Rogers test," a doctrine designed to protect First Amendment interests in the trademark context, should be applied. A recent decision out of the Ninth Circuit, Punchbowl, Inc. vs. AJ Press LLC ("Punchbowl II"), applies the Rogers test for the first time following Jack Daniel's.
As background, when parties bring trademark infringement claims under the Lanham Act, courts apply a likelihood-of-confusion analysis, asking whether a "reasonably prudent consumer" in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks. Following the Second Circuit's decision in Rogers v. Grimaldi, where background First Amendment concerns were implicated, however, courts began requiring a heightened showing for a trademark infringement claim to proceed: under the Rogers test, if a defendant could establish that the allegedly infringing use of a mark was an "expressive work," a Lanham Act plaintiff had to show the use (1) was not artistically relevant to the work or (2) explicitly misled consumers as to the source or the content of the work. In practice, the Rogers doctrine was broadly applied, because, as the Jack Daniel's Court recognized, "just about everything" can be considered an expressive work. Jack Daniel's therefore put...
