No Trademark Infringement Liability Based on Use of a Political Slogan (“Proven Problem Solver”)

[i.] The Lanham Act Protects Business Speech, Not Purely Political Expression …

The Lanham Act was enacted to stop client confusion and shield business goodwill. The Ninth Circuit has acknowledged that the Lanham Act was “expressly enacted to be utilized in business contexts” and due to this fact “doesn’t prohibit all unauthorized makes use of of a trademark.” On the coronary heart of the Lanham Act, it was “meant to guard business pursuits towards unfair competitors out there place of products and companies, not the market place of concepts and opinions.“

Whereas the Lanham Act primarily addresses business speech, courts have acknowledged its applicability to political speech underneath sure circumstances. Counting on a Second Circuit case that has expanded the Lanham Act’s attain to political speech, Cloobeck urges the Court docket to seek out the Lanham Act relevant to his Senior Mark for his marketing campaign slogan. In United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc. (2nd Cir. 1997), the Second Circuit held that political actions, together with organizing, soliciting, endorsing candidates, and distributing literature, represent “companies” inside the that means of the Lanham Act.

Whereas persuasive, United We Stand doesn’t resuscitate Cloobeck’s declare. First, and notably, this case is a Second Circuit resolution and never binding within the Ninth Circuit. Furthermore, the context of United We Stand and the case at bar are vastly completely different. A key distinction is that in United We Stand, the defendant was a political group working as an entity that offered membership, political advocacy, and fundraising companies to the general public. In contrast, right here Villaraigosa is merely a person gubernatorial candidate—he isn’t operating a political group engaged in providing “companies characteristically rendered by a political celebration to and for its members, adherents, and candidates.” As well as, in United We Stand, the court docket emphasised that the defendant’s use of the mark was tied to soliciting contributions, memberships, and occasion participation, actions with clear business traits underneath the Commerce Clause. Right here, nonetheless, Villaraigosa’s use of “PROVEN PROBLEM SOLVER” happens in the middle of political messaging, debates, and marketing campaign communications—not the sale or commercial of products or companies. Accordingly, the Court docket finds the extension of United We Stand‘s holding to the case at bar inapposite.

The Court docket acknowledges that different courts inside this district have reached the other conclusion. In Browne v. McCain (C.D. Cal. 2009), a court docket held the Lanham Act may apply in a political context, discovering a marketing campaign’s unauthorized use of a musical work in its promoting probably actionable underneath trademark regulation. Browne, nonetheless, is well distinguishable from the present case. The court docket’s evaluation in Browne hinged upon a chance of confusion evaluation …. As a result of the court docket concluded that the defendant’s marketing campaign’s use of the music created a chance of confusion as to sponsorship or approval, it held the Lanham Act utilized. Not like the scenario in Browne, nonetheless, the usage of “PROVEN PROBLEM SOLVER” right here doesn’t implicate confusion over the origin or sponsorship of products or companies, however slightly falls inside the heartland of core political expression. Accordingly, whereas Browne acknowledged that the Lanham Act might lengthen to sure political actions when there’s a vital threat of confusion, this Court docket is unconvinced the Lanham Act is relevant to the political circumstances at bar.

Quite the opposite, the Court docket finds the information of Suppose Rubix, LLC v. Be Woke. Vote (E.D. Cal. 2022), the place a district court docket declined to increase the Lanham Act to political speech, way more apposite. In Suppose Rubix, the court docket discovered that the usage of defendants’ “Be Woke. Vote” slogan to be “inherently intertwined” with social and political advocacy and due to this fact noncommercial underneath the Lanham Act. Each Suppose Rubix and the current case contain political and civic engagement campaigns that use quick punchy phrases as a part of their political messaging. In every, the marks’ goal is to encourage people to vote, to not determine or promote a business services or products. Likewise right here, “PROVEN PROBLEM SOLVER” is being utilized in marketing campaign supplies and messaging to steer voters, to not have interaction in business commerce….

[ii.] Even If the Lanham Act Prolonged to Political Speech, There Is No Believable Threat of Confusion …

Assuming arguendo that the Lanham Act ought to apply to noncommercial political speech, the Court docket is nonetheless unpersuaded that any chance of confusion [required for Lanham Act liability in this context -EV] exists between the 2 marks adequate to set off Lanham Act safety. Voters perceive that Cloobeck and Villaraigosa are two distinct people and political candidates—they’re opponents in a high-profile gubernatorial election. They’ve separate and distinct marketing campaign web sites, social media accounts, and each have interaction with the general public broadly and individually by way of marketing campaign speeches and messaging. No cheap individual would consider Cloobeck and Villaraigosa are affiliated just because each use a descriptive phrase generally utilized by political candidates for his or her campaigns. Furthermore, the FAC incorporates no allegations of misdirected donations, mistaken identification, or every other indica of confusion. To the extent any threat of confusion exists, the Court docket finds it purely hypothetical and insignificant….

[iii.] “Confirmed Drawback Solver” Is a Descriptive, Generic Phrase Not Entitled to Unique Safety

The Court docket additional declines to undertake Cloobeck’s place as a result of the Senior Mark is generic in nature and the requested aid is overly broad. “PROVEN PROBLEM SOLVER” describes a fascinating political trait, not a supply identifier. When voters think about candidates for public workplace, they naturally search people who can resolve the issues of their communities—whether or not addressing homelessness, the economic system, or housing. In that sense, voters are, by definition, in search of “drawback solvers.” Given this, it’s unsurprising that quite a few politicians have used the phrase “confirmed drawback solver” in marketing campaign supplies relationship again a long time. This signifier in politics could be traced all the way in which again so far as 1989.

Granting unique rights to a single candidate for such a standard descriptor would take away a phrase from bizarre political discourse and threat chilling core marketing campaign speech. The file additionally exhibits that Cloobeck has filed roughly seventy-five trademark purposes for numerous slogans and phrases, together with the Senior Mark. Implementing this specific mark would successfully grant Cloobeck a monopoly over widespread marketing campaign rhetoric, barring not solely Villaraigosa however probably any future candidate from utilizing these three bizarre phrases collectively. Though the Court docket doesn’t view this non-public enforcement motion as implicating the First Modification instantly, the sensible impact of granting such aid would lengthen trademark safety nicely past its correct bounds.

Cloobeck argues that enforcement is according to the various political logos obtained by different candidates, citing examples corresponding to “MAKE AMERICA GREAT AGAIN,” “YES WE CAN,” and “BUILD BACK BETTER.” He contends that these registrations replicate a standard observe amongst candidates to differentiate their campaigns by way of identifiable slogans. Whereas it’s true that some political slogans have been registered underneath as logos, these slogans had been traditionally distinctive and uniquely related to a particular candidate or motion.In contrast, the Court docket finds that the Senior Mark—”I AM A PROVEN PROBLEM SOLVER”—is merely descriptive and lacks any distinctiveness or singular affiliation with Cloobeck’s marketing campaign. The Court docket is unconvinced that mere chronological precedence in submitting a trademark utility entitles Cloobeck to unique management over such inherently generic political language. Accordingly, the Court docket declines to increase the Lanham Act to circumstances that will successfully prohibit candidates from utilizing bizarre marketing campaign language.

Lastly, the Court docket is very cautious concerning the breadth of aid Cloobeck seeks. His Prayer for Aid requests an order enjoining Villaraigosa and all these appearing in live performance with him from utilizing any mark “confusingly comparable” to Cloobeck’s. Though Cloobeck presently identifies solely the phrase “PROVEN PROBLEM SOLVER,” the Court docket is anxious that such language may simply be expanded to embody different bizarre expressions corresponding to “PROBLEM SOLVER” or “PROVEN TO SOLVE PROBLEMS.” This underscores the slippery slope inherent in granting the requested injunction. Furthermore, whereas the fast aid is directed at Villaraigosa, its logic may lengthen to different political candidates utilizing comparable phrasing sooner or later. Given the generic nature of the Senior Mark and the issue of crafting narrowly tailor-made aid with out unduly proscribing political speech, the Court docket concludes that the Lanham Act can not help the declare or the treatment sought….