Traditional Trademark Infringement: Likelihood of Confusion
Trademark infringement under the Lanham Act inquires whether there is a likelihood of confusion as to the source of the goods or services with which the trademark is used in commerce. Each regional federal circuit has its own multifactor test for likelihood of confusion for trademark infringement. These tests consist of a nonexhaustive list of factors that are considered under the totality of the circumstances. For example, the Second Circuit applies the Polaroid factors, while the Ninth Circuit applies the Sleekcraft factors.
The Federal Circuit applies the 13 DuPont factors in connection with trademark applications filed with the U.S. Patent and Trademark Office (USPTO), which are: (1) the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression; (2) the similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use; (3) the similarity or dissimilarity of established, likely to continue trade channels; (4) the conditions under which and buyers to whom sales are made; (5) the fame of the prior mark; (6) the number and nature of similar marks in use on similar goods; (7) the nature and extent of any actual confusion; (8) the length of time during and conditions under which there has been concurrent use without evidence of actual confusion; (9) the variety of goods on which a mark is or is not used; (10) the market interface between the applicant and the owner of a prior mark; (11) the extent to which the applicant has a right to exclude others from use of its mark on its goods; (12) the extent of potential confusion; and (13) any other established fact probative of the effect of use.
Regardless of which circuit test is applied for likelihood of confusion, not every factor may be relevant or present in any given case. Nonetheless, the key factors usually are the similarity or dissimilarity of the marks and the relatedness of the goods or services.
Likelihood of confusion is typically a fact-intensive inquiry that often is not suitable for early disposition by summary judgment or motion to dismiss. The Rogers test, however, is more conducive to such early disposition.
The Rogers Test: Artistic Relevance and Explicitly Misleading
Rogers concerned the movie Ginger and Fred, a fictional story about Italian cabaret performers who imitated the famed Hollywood duo of Ginger Rogers and Fred Astaire. Ginger Rogers sued the film’s producers under the Lanham Act, alleging that the film’s title gave the false impression that the film was about her or sponsored by her.
The Second Circuit affirmed the district court’s grant of summary judgment for the defendant film producers, finding that titles of artistic works, “combining artistic expression and commercial promotion,” required more First Amendment protection “than the labeling of ordinary commercial products.” Accordingly, trademark infringement would “apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.”
This led to the creation of the two-prong Rogers test, under which the plaintiff must show that: (1) the title has no artistic relevance to the underlying work whatsoever, or (2) if it has some artistic relevance, the title is explicitly misleading as to the source of the content of the work.
With respect to the “artistic relevance” prong, the court determined that the names “Ginger” and “Fred” were “not arbitrarily chosen just to exploit the publicity value of their real life counterparts” but had “genuine relevance to the film’s story.” The title conveyed “an ironic meaning that [was] relevant to the film’s content.”
For the “explicitly misleading” prong of its inquiry, the court found that the title “contain[ed] no explicit indication that Rogers endorsed the film or had a role in producing it.” Any risk that the title would mislead consumers was “outweighed by the danger that suppressing an artistically relevant though ambiguous title will unduly restrict expression.”
One of the benefits of the Rogers test is that it provides a pathway for resolving disputes involving expressive works relatively early and quickly, without having to go through extensive discovery, which otherwise may unduly chill expression.
The Rogers test has since been adopted by several other circuits, including the Ninth Circuit, and has been expanded beyond the title of a creative work to other aspects.
The Ninth Circuit first employed the Rogers test in Mattel, Inc. v. MCA Records, Inc., which concerned the song “Barbie Girl” with lyrics such as “Life in plastic, it’s fantastic” that satirized Mattel’s iconic Barbie dolls. Applying the Rogers test, the Ninth Circuit affirmed summary judgment of no trademark infringement. The court held that the use of Mattel’s BARBIE mark in the song’s title was artistically relevant because the song was “about Barbie” and what she represents, and was not misleading as to its source. In an interesting turn of events, Mattel years later licensed the “Barbie Girl” song to promote its iconic doll.
Contrarily, the Rogers test was not applied by the District of Minnesota in American Dairy Queen Corp. v. New Line Productions, Inc., where the owner of the DAIRY QUEEN mark for ice cream and frozen confections sought an injunction against the movie title “Dairy Queens” for a mockumentary about beauty contests in rural Minnesota (characterized as “dairy country”) because it may “cause the public to associate its trademarked name with the unwholesome content of the film.” The court distinguished the title in Rogers as “designed to evoke[] a part of the artistic concept inhering in the famous names it used,” whereas “no such artistic concept inheres in the proposed [‘Dairy Queens’] title” that was not designed to evoke or reference the DAIRY QUEEN mark. The court granted an injunction against the movie’s title because consumers were likely to be confused as to whether the movie had the “endorsement or permission” to use the DAIRY QUEEN mark, even though the court also had found that the movie’s title was not designed to evoke or suggest any relationship with Dairy Queen in order to distinguish the Rogers case. The film was subsequently retitled as Drop Dead Gorgeous.
More recently, the Eleventh Circuit considered the Rogers test in MGFB Properties, Inc. v. Viacom Inc., a trademark infringement lawsuit filed by the owner of the Flora-Bama Lounge, a well-known establishment sitting on the border of Florida and Alabama, against the MTV Floribama Shore television show. Like the Dairy Queen case, the show’s title was not designed to evoke or suggest a relationship with the restaurant. Unlike the Dairy Queen case, however, the court applied the Rogers test. The court found that the MTV Floribama Shore show “clearly” met the artistic relevance requirement of the first prong of the Rogers test. Indeed, “Floribama” described the subculture being profiled in the show and the geographic area exemplified by the subculture. As for the explicitly misleading prong, the court found that the series was not marketed as endorsed or sponsored by the restaurant.
Beyond titles, the Northern District of Indiana in Fortres Grand Corp. v. Warner Bros. Entertainment Inc. applied the Rogers test to affirm summary judgment of no trademark infringement in connection with the film The Dark Knight Rises. The plot of that film included a handful of references to a fictional software program called “clean slate”—but the plaintiff, Fortres Grand, manufactures and sells a real software program called Clean Slate. Fortres Grand argued that there is trademark infringement when a fictional product bears the same name as its real product. The court, however, found that the use of “clean slate” had artistic relevance to the film and that there was no affirmative statement that Fortres Grand sponsored or endorsed the use of “clean slate” in the film. Calling the Rogers decision “one of the beacons used to navigate the murky boundary between trademark law and the First Amendment,” the court concluded that “there can be little doubt that Warner Bros. has satisfied both prongs of the Rogers test.”
In an earlier case, Caterpillar Inc. v. Walt Disney Co., Caterpillar sought a temporary restraining order (TRO) against the direct-to-home video release of George of the Jungle 2 because its bulldozers were being used by the villains in the movie and were called “deleterious dozers” and “maniacal machines” by the movie’s narrator. With no reference to the Rogers test, the court denied the TRO, finding it “unlikely” that any consumer would be more likely to buy or watch George of the Jungle 2 because of any mistaken belief that Caterpillar sponsored the movie. Although a denial of a TRO is not a dispositive decision of no infringement as in the other cases discussed, it does illustrate the difficulty of asserting a trademark for real-world products against props used in fictional entertainment even in the absence of the Rogers test.
Recently, in Stouffer v. National Geographic Partners, L.L.C., a title-versus-title bout between competing documentary programs titled Wild America and Untamed Americans (which was called Wild America abroad), Judge Martinez of the District of Colorado asked, “[I]s the Rogers test the right test?” The court concluded that the Rogers test tilted too far in favor of First Amendment interests and proposed a six-prong test to evaluate the following: (1) whether expressive content has been added; (2) whether the competing uses are for similar kinds of goods and services; (3) whether the timing indicates “motive to capitalize on popularity” of the mark; (4) the artistic relevance to the underlying work; (5) public statements or conduct that are suggestive of “non-artistic motive”; and (6) private statements or conduct that are suggestive of “non-artistic motive.” Under the newly proposed six-prong Stouffer test, the case was dismissed under Federal Rule of Civil Procedure 12(b)(6).
Jack Daniel’s: Using Another’s Trademark as a Trademark
As the Rogers test kept expanding beyond titles to other aspects of creative works, the Ninth Circuit applied the Rogers test in Jack Daniel’s to affirm summary judgment that a squeaky, chewable dog toy designed to look like a bottle of Jack Daniel’s whiskey with the name “Bad Spaniels” alongside the descriptive phrase “The Old No. 2 on Your Tennessee Carpet” did not infringe Jack Daniel’s trademarks and trade dress.
On appeal, the U.S. Supreme Court took “no position on” the merits of the Rogers test in other instances but held that where the alleged infringing mark is used as a trademark, meaning “to identify or brand [a defendant’s] goods or services,” then the Rogers test is not to be applied. Because VIP Products used Jack Daniel’s trademarks and trade dress for its Bad Spaniels trademark and trade dress, which in turn were used to identify the source of VIP Products’ dog chew toy, the Supreme Court found that it was using the alleged infringing mark as its trademark and thus could not avail itself of the Rogers test.
Accordingly, Jack Daniel’s requires a court, when faced with a Rogers-test challenge, to determine if the allegedly infringing mark is being used as a trademark. If yes, then the traditional likelihood of confusion analysis is applied. If not being used as a trademark, then the court applies the Rogers test.
Nonetheless, the expressive message being conveyed by the alleged infringing use could still be relevant to the likelihood of confusion analysis. Such an “expressive message—particularly a parodic one, as VIP asserts—may properly figure in assessing the likelihood of confusion.” The Court further noted that sometimes there may be no plausible likelihood of confusion because of “various contextual considerations” such that dismissal under Federal Rule of Civil Procedure 12(b)(6) might be appropriate.
Because the Supreme Court took no position on the merits of the Rogers test otherwise, Rogers remains viable at least with respect to the title of a single creative work that identifies the work itself rather than its source. In addition to the title of a single work failing to function as a trademark, treating a single title as a trademark also could compromise the policy of allowing the public to make unrestricted use of that single title work after the expiration of its copyright.
Trademark Protection for a Series of Creative Works
The title or name for a series of creative works, however, may function as a trademark to indicate that each work in the series comes from the same source. Generally, a series of works is one in which the content changes significantly with each entry in the series.
The USPTO recognizes that the title of a continuing series of works (such as a book, television, or movie “series” that is presumed to change with each presentation) may constitute a trademark for either entertainment services or educational services. The title of a single creative work, however, will be refused registration by the USPTO because the title identifies a specific expressive work rather than being a source identifier in the public mind. To obtain a registered trademark for a series, the applicant “must submit evidence that the title is used on at least two different creative works.” Accordingly, where there is evidence of a series of works, the USPTO likely will presume that the title of the series is source-identifying. Examples of such titles functioning as trademarks abound. HARRY POTTER is a registered trademark for “books” and “motion picture films”; STAR TREK is a registered trademark for a “film series for television”; and JERSEY SHORE is a registered trademark for “entertainment services in the nature of continuing program series.”
The District of Delaware recently applied Jack Daniel’s to the title of a television show in HomeVestors of America, Inc. v. Warner Bros. Discovery, Inc. HomeVestors franchises a business system for flipping houses and owns over 30 “ugly”-formative trademarks—for example, THE UGLIEST HOUSE OF THE YEAR mark, which is used in connection with a yearly home renovation contest. HomeVestors allegedly was contacted on behalf of Warner Bros. Discovery (WBD) in June 2020 about possibly collaborating on a new show for WBD’s HGTV network, but HGTV instead later premiered a new show called Ugliest House in America in 2022 without HomeVestors’ involvement. “HomeVestors contacted WBD in January and February of 2022 regarding the likelihood of confusion as to whether the HGTV show is affiliated with or sponsored by HomeVestors” and later filed suit, asserting claims of trademark infringement against WBD.
The court noted that, after the Supreme Court’s decision in Jack Daniel’s, the critical issue was whether WBD’s use of the “Ugliest House in America” title was source-identifying—“in other words, has [WBD] used a trademark as a trademark.” Unfortunately, the court relied on HomeVestors’ own trademark use, including that the respective marks are similar, “that internet searches for HomeVestors’ marks return results for WBD’s show,” and that WBD initially tried to partner with HomeVestors for the purpose of capitalizing on HomeVestors’ brand, as being sufficient “to support a plausible inference that WBD’s use of the mark is source-identifying—thus precluding WBD’s Rogers defense.”
While comparisons with HomeVestors’ use of its trademark would be relevant to likelihood of confusion, the alleged facts relied upon by the court do not actually establish that WBD’s own use of the Ugliest House in America title was source-identifying. Indeed, it could be possible to allege similar facts with respect to the title of a single creative work, such as the Ginger and Fred movie or the “Barbie Girl” song, but that would not necessarily mean that such a single title work would function as a trademark. It would have been better for the court to have focused on WBD’s use of the show’s title as a source-identifying trademark for a series of creative works made for television.
Trademark Protection of a Single Work with Franchise Potential
Sometimes what was intended to be a single work becomes a series of works years later. For example, the movie Alien was released in 1979. A sequel, Aliens, was released in 1986. And then subsequent sequels started using “Alien” in their titles thereafter. Interestingly, the trademark application to register the ALIEN mark for “motion picture films” was not filed until 1992 when the third movie, Alien 3, was released, with the application claiming a date of first use going back to May 11, 1979. It seems unlikely there was any thought of an ALIEN film series when the first film was released in 1979, but now there are a series of works. Because a single work could later become a series of works, how should the Rogers test be applied under this potential scenario?
One can imagine a horror movie about demonically possessed farm equipment having a title such as “Bad Caterpillar” or “The Devil in John Deere.” Under the Rogers test, these titles could have artistic relevance to the underlying horror movie. And, assuming nothing explicitly misleading about Caterpillar or John Deere as the source of the movie, the Rogers test could be the end of the analysis for the title of a single work.
But reusing “Caterpillar” or “John Deere” in the title for a sequel could then result in that title functioning as a trademark to indicate that each work (namely, the first movie and the sequel) comes from the same source. Then the Rogers test could be inapplicable under Jack Daniel’s, such that the more fact-intensive likelihood of confusion analysis would be required. A risk-avoidance strategy for this example would be to retcon the title, similar to how the movie First Blood later became known as the “Rambo” franchise through its sequels.
The Future of the Rogers Test
Much has been written in the trade press about the rise of intellectual property, sequels, and franchises in the entertainment industry. Trademarks for these entertainment properties have become more prominent and important. In this environment, the balance between Speech-Zilla and Trademark Kong might be tilting toward Kong.
While the Rogers test should continue to apply to the title of a single work, it may not be apt with respect to a title used for a series of works, such as Harry Potter, Star Trek, or Jersey Shore. After Jack Daniel’s, the Rogers test likely no longer applies to the series title that functions as a trademark, but there might be a one-bite rule for the Rogers test with respect to the title of a single creative work, at least until the sequel comes out.
In view of the potential for a title of a creative work to also function as a trademark for a series of such works, the applicability of the Rogers test might be in doubt for certain titles. Of the previously discussed post-Rogers cases, the Rogers test likely would still be applicable to cases such as Mattel (“Barbie Girl”), Fortres Grand (The Dark Knight Rises), and Caterpillar (George of the Jungle 2), where the accused one-off use did not function as a trademark—but probably not to the likes of MGFB Properties (MTV Floribama Shore) or Stouffer (Wild America) because, even though titles of creative works were in dispute, the title itself may function as a trademark for a series of works in those latter two instances.
Nonetheless, even if the Rogers test is not available for the title that functions as a trademark for a series of works, the Ninth Circuit recently noted in Punchbowl, Inc. v. AJ Press, LLC that “not ‘every infringement case involving a source-identifying use requires full-scale litigation’ and that some cases can be resolved at the Rule 12(b)(6) stage.” Involving the use of “Punchbowl News” for an online political news service that was accused of infringing the plaintiff’s PUNCHBOWL mark for online greeting cards, the Ninth Circuit noted that “[w]hen companies operating in different spaces use the same common words as trademarks with different expressive connotations, it reduces the likelihood of confusion.” The case was remanded to the district court to proceed with a likelihood of confusion analysis, perhaps on summary judgment.