PUNCHBOWL, INC. V. AJ PRESS, LLC

FILED

FOR PUBLICATION

NOV 14 2022

UNITED STATES COURT OF APPEALS MOLLY C. DWYER, CLERK

FOR THE NINTH CIRCUIT U.S. COURT OF APPEALS

PUNCHBOWL, INC., a Delaware No. 21-55881

corporation,

Plaintiff-Appellant, D.C. No.

2:21-cv-03010-

SVW-MAR

v. OPINION

AJ PRESS, LLC, a Delaware limited

liability company,

Defendant-Appellee.

Appeal from the United States District Court

for the Central District of California

Stephen V. Wilson, District Judge, Presiding

Argued and Submitted May 17, 2022

Pasadena, California

Before: John B. Owens and Daniel A. Bress, Circuit

Judges, and Sidney A. Fitzwater, * District Judge.

Opinion by Judge Bress

__________________

*

The Honorable Sidney A. Fitzwater, United States District Judge for

the Northern District of Texas, sitting by designation.

SUMMARY **

Lanham Act

The panel affirmed the district court’s summary

judgment in favor of AJ Press, LLC, in an action brought by

Punchbowl, Inc. (Punchbowl), alleging violations of the

Lanham Act for trademark infringement and unfair

competition and related state law claims.

Punchbowl is an online party and event planning

service. AJ Press owns and operates Punchbowl News, a

subscription-based online news publication that provides

articles, podcasts, and videos about American politics, from

a Washington, D.C. insider’s perspective. Punchbowl

claimed that Punchbowl News is misusing its “Punchbowl”

trademark (the Mark).

Traditionally, courts apply a likelihood-of-confusion test

to claims brought under the Lanham Act. When artistic

expression is at issue, however, the traditional test fails to

account for the full weight of the public’s interest in free

expression. If the product involved is an expressive work,

the court applies a gateway test, grounded in background

First Amendment concerns, to determine whether the

Lanham Act applies. Under the approach set forth in Rogers

v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), adopted by this

court in Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th

Cir. 2002), the defendant must first make a threshold legal

showing that its allegedly infringing use is part of an

expressive work protected by the First Amendment. If the

**

This summary constitutes no part of the opinion of the court. It has

been prepared by court staff for the convenience of the reader.

defendant meets this burden, the Lanham Act does not apply

unless the defendant’s use of the mark (1) is not artistically

relevant to the work or (2) explicitly misleads consumers as

to the source or content of the work.

Punchbowl asserted that the Rogers test is entirely

inapplicable because it does not extend to “the brand name

of [a] commercial enterprise.” The panel disagreed, holding

that AJ Press’s use of the Mark in Punchbowl News is

sufficiently expressive to merit First Amendment protection

and application of the Rogers test. Applying that test, the

panel noted that the first prong sets a very low threshold: the

level of artistic relevance merely must be above zero. As to

the second prong, the panel concluded that because AJ Press

uses the Mark in an entirely different market and as only one

component of the larger expressive work, Punchbowl News

is not explicitly misleading as to its source. The panel wrote

that no reasonable buyer would believe that a company that

operates a D.C. insider news publication is related to a

“technology company” with a “focus on celebrations,

holidays, events, and memory-making.” The panel wrote

that this resolves not only the Lanham Act claims, but the

state law claims as well. The panel explained that survey

evidence of consumer confusion is not relevant to the

question of whether AJ Press’s use of the Mark is explicitly

misleading, which is a legal test for assessing whether the

Lanham Act applies.

The panel held that the district court’s denial of

Punchbowl’s request for a continuance under Fed. R. Civ. P.

56(d) to permit further discovery was not an abuse of

discretion.

COUNSEL

Peter J. Willsey (argued) and Vincent Badolato, Brown

Rudnick LLP, Washington, D.C.; Rebecca MacDowell

Lecaroz and Melanie Dahl Burke, Brown Rudnick LLP,

Boston, Massachusetts; David Stein, Brown Rudnick LLP,

Irvine, California; for Plaintiff-Appellant.

Ian C. Ballon (argued), Rebekah S. Guyon (argued), and

Nina D. Boyajian, Greenberg Traurig LLP, Los Angeles,

California, for Defendant-Appellee.

Cara L. Gagliano and Corynne McSherry, Electronic

Frontier Foundation, San Francisco, California, for Amicus

Curiae Electronic Frontier Foundation.

Eugene Volokh; Elizabeth Anastasi, Max Hyams, and Sofie

Oldroyd, Certified Law Students; UCLA School of Law

First Amendment Clinic, for Amici Curiae Professors Ann

Bartow, Jim Gibson, James Grimmelmann, Mark Lemley,

Phil Malone, Mark McKenna, Lisa Ramsey, Jeremy Sheff,

Jessica Silbey, Christopher Sprigman, and Rebecca Tushnet.

PUNCHBOWL, INC. V. AJ PRESS, LLC 1

OPINION

BRESS, Circuit Judge:

Punchbowl, Inc., is an online party and event planning

service. Punchbowl News is a subscription-based online

news publication that provides articles, podcasts, and videos

about American politics, from a Washington, D.C. insider’s

perspective. Punchbowl claims that Punchbowl News is

misusing its “Punchbowl” trademark. Applying our

precedents, we hold that Punchbowl News’s use of the term

“Punchbowl” is expressive in nature and not explicitly

misleading as to its source. It thus falls outside the Lanham

Act as a matter of law.

I

Punchbowl, Inc. (Punchbowl), is a self-described

“technology company that develops online communications

solutions for consumers,” with a “focus on celebrations,

holidays, events and memory-making.” Punchbowl

provides “online event and celebration invitations and

greetings cards” and “custom sponsorships and branded

invitations,” as part of a subscription-based service.

Punchbowl also works with companies such as The Walt

Disney Company, Chuck E. Cheese, and Dave & Busters to

help them promote their brands through online invitations.

Punchbowl has used the mark Punchbowl® (the Mark)

since at least 2006. It registered the Mark with the United

States Patent & Trademark Office in 2013. The Mark was

registered primarily in connection with the “[t]ransmission

of invitations, documents, electronic mail, announcements,

photographs and greetings”; “[p]arty planning”; and

“[p]reparation of electronic invitations, namely,

2 PUNCHBOWL, INC. V. AJ PRESS, LLC

providing . . . software that enables users to . . . customize

electronic invitations.”

Punchbowl promotes itself as “The Gold Standard in

Online Invitations & Greeting Cards,” as reflected in this

record excerpt from Punchbowl’s website:

A larger example of Punchbowl’s Mark and logo (a

punch ladle) is shown here:

PUNCHBOWL, INC. V. AJ PRESS, LLC 3

But this is not the only Punchbowl. Journalists Jake

Sherman and Anna Palmer are the co-founders of AJ Press,

LLC, a company that “provides curated, non-partisan

commentary, opinions, and critiques.” In 2021, Palmer and

Sherman co-founded Punchbowl News with reporter John

Bresnahan. Punchbowl News is a subscription-based online

news publication that covers topics in American government

and politics. AJ Press owns and operates Punchbowl News,

choosing which topics to cover and how to address them. AJ

Press concentrates its reporting on the “insiders” who make

decisions in Washington, D.C., (i.e., politicians, aides, and

lobbyists), and on events and news that affect American

political dynamics and elections.

Given the publication’s focus on Beltway politics, AJ

Press wanted a name that evoked its subject matter. It chose

“Punchbowl” because that is the nickname the Secret

Service uses to refer to the U.S. Capitol. The title

Punchbowl News was thus selected to “elicit the theme and

geographic location” of the publication. AJ Press has filed

trademark applications to register the marks “Punchbowl

News” and “Punchbowl Press.”

Punchbowl News often uses a slogan—“Power. People.

Politics.”—in connection with its name and logo. Like its

name, AJ Press chose its slogan to reflect the subject matter

and theme of the Punchbowl News publication. Similarly,

AJ Press selected a logo to allude to the publication’s focus

on insider news and political commentary. The logo depicts

an overturned U.S. Capitol filled with bright pink/purple

punch—an apparently playful homage to a blend of the

traditional red and blue associated with America’s leading

political parties that emphasizes the publication’s

nonpartisan stance. This is an example from the record of

Punchbowl News’s logo in conjunction with its slogan, as it

appears on its website:

4 PUNCHBOWL, INC. V. AJ PRESS, LLC

Punchbowl News frequently promotes its connection to

its founders. Its website depicts a large image of Sherman,

Palmer, and Bresnahan accompanied by text stating that

Punchbowl News was “founded by journalists and best-

selling authors Jake Sherman and Anna Palmer, and co-

founded by veteran Capitol Hill reporter John Bresnahan.”

Punchbowl News’s publications state at the top, near the

name “Punchbowl News,” that they are “by John Bresnahan,

Anna Palmer, and Jake Sherman.”

The parties’ coinciding uses of “Punchbowl” led to this

lawsuit. Punchbowl sued AJ Press alleging violations of the

Lanham Act for trademark infringement and unfair

competition. 15 U.S.C. §§ 1114, 1125(a). Punchbowl also

brought related state law claims.

The district court granted summary judgment to AJ

Press, concluding that its use of the name “Punchbowl” did

not give rise to liability because it constituted protected

expression and was not explicitly misleading as to its source.

The district court also denied Punchbowl’s request for a

continuance under Federal Rule of Civil Procedure 56(d) to

conduct additional discovery.

Punchbowl timely appeals. We review the district

court’s grant of summary judgment de novo. Miranda v.

City of Casa Grande, 15 F.4th 1219, 1224 (9th Cir. 2021).

PUNCHBOWL, INC. V. AJ PRESS, LLC 5

II

The Lanham Act, 15 U.S.C. § 1051 et seq., “creates a

comprehensive framework for regulating the use of

trademarks and protecting them against infringement,

dilution, and unfair competition.” Gordon v. Drape

Creative, Inc., 909 F.3d 257, 263 (9th Cir. 2018) (quoting

Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand

Mgmt., Inc., 618 F.3d 1025, 1030 (9th Cir. 2010)).

Traditionally, courts apply a likelihood-of-confusion test to

claims brought under the Lanham Act. See id. at 264.

When “artistic expression is at issue,” however, we have

held that “the traditional test fails to account for the full

weight of the public’s interest in free expression.” Id.

(quotations omitted). If we were to disregard “the expressive

value that some marks assume, trademark rights would grow

to encroach upon the zone protected by the First

Amendment.” Mattel, Inc. v. MCA Records, Inc., 296 F.3d

894, 900 (9th Cir. 2002). A trademark owner “‘does not

have the right to control public discourse’ by enforcing his

mark.” Gordon, 909 F.3d at 264 (quoting Mattel, 296 F.3d

at 900). Thus, “if the product involved is an expressive

work,” we apply a gateway test, grounded in background

First Amendment concerns, to determine whether the

Lanham Act applies. Brown v. Elec. Arts, Inc., 724 F.3d

1235, 1239 (9th Cir. 2013); see also Gordon, 909 F.3d at 264

(explaining that when expressive activity is at issue, we

“employ[] the First Amendment as a rule of construction to

avoid conflict between the Constitution and the Lanham

Act”).

In Mattel, we adopted the approach set forth by the

Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir.

1989), to frame the inquiry into whether the Lanham Act

applies. See Mattel, 296 F.3d at 902. Under the Rogers test,

6 PUNCHBOWL, INC. V. AJ PRESS, LLC

the defendant must first “make a threshold legal showing

that its allegedly infringing use is part of an expressive work

protected by the First Amendment.” Gordon, 909 F.3d at

264. If the defendant meets this burden, the Lanham Act

does not apply unless “the defendant’s use of the mark (1) is

not artistically relevant to the work or (2) explicitly misleads

consumers as to the source or the content of the work.” Id.

(citing Mattel, 296 F.3d at 902). “Neither of these prongs is

easy to meet.” Dr. Seuss Enters., L.P. v. ComicMix LLC,

983 F.3d 443, 462 (9th Cir. 2020). This approach is justified,

we have held, because of the First Amendment interests at

stake and because consumers are less likely to believe that

someone using a mark in an expressive work is seeking to

attribute its work to the trademark holder. See Twentieth

Century Fox Television v. Empire Distrib. Inc., 875 F.3d

1192, 1196 (9th Cir. 2017).

A

Before we apply the Rogers test, however, we must

address Punchbowl’s objection that this case lies outside of

Rogers’s domain. Specifically, Punchbowl asserts that the

Rogers test is entirely inapplicable because it does not

extend to “the brand name of [a] commercial enterprise.” In

Punchbowl’s view, that kind of branding is insufficiently

expressive to merit Rogers’s heightened protections. We

disagree.

“[T]he only threshold requirement for the Rogers test is

an attempt to apply the Lanham Act to First Amendment

expression.” Twentieth Century Fox, 875 F.3d at 1198. To

determine whether a work is expressive, we ask “whether the

work ‘is communicating ideas or expressing points of

view.’” VIP Prods. LLC v. Jack Daniel’s Props., Inc., 953

F.3d 1170, 1174–75 (9th Cir. 2020) (quoting Mattel, 296

F.3d at 900). “A work need not be the expressive equal of

PUNCHBOWL, INC. V. AJ PRESS, LLC 7

Anna Karenina or Citizen Kane to satisfy this requirement,

and is not rendered non-expressive simply because it is sold

commercially.” Id. at 1175 (citations and quotations

omitted).

Our case law demonstrates that a wide range of activity

qualifies as expressive under Rogers (and thus the First

Amendment). For example, in VIP Products, we concluded

that a rubber dog toy resembling a bottle of Jack Daniel’s

whiskey was expressive because it conveyed a humorous

message. 953 F.3d at 1175. In Gordon, we similarly

concluded, with “little difficulty,” that greeting cards

containing the trademarked lines “Honey Badger Don’t

Care” and “Honey Badger Don’t Give a S - - -” were

expressive in nature because they juxtaposed “an event of

some significance,” like a birthday, with the “assertion of

apathy” commonly associated with the trademarked phrase.

909 F.3d at 268–69. The expressive aims at issue in these

cases were not necessarily lofty, but they were expressive,

nonetheless.

Titles, too, can be expressive in nature. Indeed, Rogers

itself concerned the title of a movie. See Rogers, 875 F.2d

at 1000. There, the Second Circuit explained that its test

“insulates from restriction titles with at least minimal artistic

relevance that are ambiguous or only implicitly misleading.”

Id. We have applied Rogers to the title of a song (“Barbie

Girl”), see Mattel, 296 F.3d at 902, and the title of

photographic works, see Mattel, Inc. v. Walking Mountain

Prods., 353 F.3d 792, 807 (9th Cir. 2003). In Twentieth

Century Fox, we held that Fox’s use of the mark “Empire”

as a title for a television show was expressive because “the

show’s setting is New York, the Empire State, and its subject

matter is a music and entertainment conglomerate, ‘Empire

Enterprises,’ which is itself a figurative empire.” 875 F.3d

at 1198. In all these cases, the use of the mark was not

8 PUNCHBOWL, INC. V. AJ PRESS, LLC

merely an “arbitrary” source-identifier. Id. at 1198. In fact,

so initially focused was the Rogers doctrine on titles that it

was only later that we “extended [Rogers] from titles to

allegedly infringing uses within the body of an expressive

work.” Id. at 1196 (citing E.S.S. Ent. 2000, Inc. v. Rock Star

Videos, Inc., 547 F.3d 1095, 1099 (9th Cir. 2008)).

In this case, we hold that AJ Press’s use of the

Punchbowl Mark is sufficiently expressive to merit First

Amendment protection, and thus application of the Rogers

test. Though AJ Press is a commercial enterprise, it is selling

core First Amendment-protected information. The content

of its publication, and its use of “Punchbowl” in the name of

its brand and publications, is expressive. AJ Press

specifically chose the name “Punchbowl” to convey the D.C.

insider perspective of its news material. 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,

see VIP Prods., 953 F.3d at 1175, we have little doubt that

AJ Press’s use of the Punchbowl Mark is as well.

We easily reject Punchbowl’s argument that AJ Press’s

“various publications include ‘opinions’ and ‘journalism’

that . . . are a far cry from the types of artistic and creative

works that often merit heightened protection.” Any attempt

to divide up the world between fact and fiction, news and art,

fails under the First Amendment concerns that animate

Rogers and its progeny. “The Free Speech Clause exists

principally to protect discourse on public matters.” Brown

v. Ent. Merchs. Ass’n, 564 U.S. 786, 790 (2011); cf. Zacchini

v. Scripps-Howard Broad. Co., 433 U.S. 562, 578 (1977)

PUNCHBOWL, INC. V. AJ PRESS, LLC 9

(“There is no doubt that entertainment, as well as news,

enjoys First Amendment protection.”). News publications

“communicat[e] ideas” and “express[] points of view” on

matters of public concern. VIP Prods., 953 F.3d at 1174

(quoting Mattel, 296 F.3d at 900). Punchbowl News is

plainly an expressive work, and its use of “Punchbowl” is

likewise expressive in nature. Punchbowl’s suggestion that,

under Rogers, news and opinion should be treated differently

from “creative” works, finds no support in our cases.

We also reject Punchbowl’s argument that AJ Press’s use

of “Punchbowl” falls outside Rogers because the Mark “is

not typically used in the content of [AJ Press’s] news

publications” but rather as part of a “commercial brand.” In

Twentieth Century Fox, we expressly held that whether “a

mark ha[s] attained a meaning beyond its source-identifying

function” is not a threshold requirement for applying Rogers.

875 F.3d at 1197. Rather, this “is merely a consideration

under the first prong of the Rogers test.” Id.

Regardless, in this case, attempting to distinguish

between a brand and the body and titles of individual articles

fails to appreciate the expressive connection between the

publication’s title and brand and the reporting that appears

under that heading. The title of the publication here

amplifies the content of the communications and gives

context to them. Punchbowl concedes that the use of the

word “Punchbowl” in an article or the title of an individual

article would be expressive. That AJ Press used

“Punchbowl” as the title of a proverbial series does not make

it any less expressive.

The logic of Rogers is equally applicable to the titles or

brands of news publications as it is to the titles or content of

individual articles. Our decision in Twentieth Century Fox

is critical in this respect. There, the record company Empire

10 PUNCHBOWL, INC. V. AJ PRESS, LLC

Distribution challenged Fox’s use of its “Empire” mark as

the title of a TV series about a fictional music label named

“Empire Enterprises.” 875 F.3d at 1195. Empire

Distribution argued that Rogers was not implicated because

“Fox’s use of the mark ‘Empire’ extend[ed] well beyond the

titles and bodies of the[] expressive works.” Id. at 1196.

Specifically, Fox used the Empire mark as an “umbrella

brand to promote and sell music and other commercial

products,” including in connection with “online advertising”

and “the sale or licensing of consumer goods.” Id.

We held that use of the “Empire” mark as an umbrella

brand did not take the case outside of Rogers. Id. at 1196–

97. We noted that Rogers itself “concerned both a movie

with an allegedly infringing title and its advertising and

promotion.” Id. at 1197. Although Fox’s “promotional

efforts technically f[e]ll outside the title or body of an

expressive work,” Rogers still applied. Id. at 1996–97. In

so holding, we reasoned that the First Amendment interests

underlying Rogers “could be destabilized if the titles of

expressive works were protected but could not be used to

promote those works.” Id. at 1997.

The logic of Twentieth Century Fox governs here.

Punchbowl News is within Rogers’s bounds even though it

consists of underlying expressive works and serves as an

“umbrella brand” for them. Id. at 1196. Indeed, here, unlike

in Twentieth Century Fox, the Punchbowl Mark is being

used to promote articles and other materials that are clearly

expressive in nature and core First Amendment material,

which arguably makes the Rogers test even more relevant.

Just because a mark is used as a brand for a media

publication does not mean the use of the name is beyond

Rogers’s coverage.

PUNCHBOWL, INC. V. AJ PRESS, LLC 11

Punchbowl also maintains that there are other ways AJ

Press could have expressed itself without using

“Punchbowl” in the name of its publication or branding. But

that argument, which poses major First Amendment

problems, does not make AJ Press’s use of “Punchbowl”

non-expressive. See Rogers, 875 F.2d. at 998 (rejecting the

argument that “First Amendment concerns are implicated

only where a title is so intimately related to the subject matter

of a work that the author has no alternative means of

expressing what the work is about”).

Punchbowl’s attempt to evade Rogers is also undercut by

the fact that AJ Press does not use the Punchbowl Mark as a

bare source-identifier. As will be discussed in more detail

below, AJ Press uses the name “Punchbowl,” often in

conjunction with its slogan and logo, to broadcast a unifying

theme that reflects its focus on insider politics in

Washington. And it typically uses “Punchbowl” in the title

“Punchbowl News,” or through an otherwise obvious

connection to its news reporting. The name Punchbowl

News itself (in addition to the underlying publications)

undoubtedly communicates a perspective on the subjects it

covers. See VIP Prods., 953 F.3d at 1174.

In short, Punchbowl has not provided legal support for

its assertion that the name of a brand or publication of a news

enterprise can never be expressive, or that it is not expressive

here. Accordingly, we evaluate the use of the Mark in

Punchbowl News under the Rogers framework.

B

As we have explained, Rogers “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.”

12 PUNCHBOWL, INC. V. AJ PRESS, LLC

VIP Prods., 953 F.3d at 1174 (quotations omitted). The first

part of this test sets a very low threshold: “the level of

[artistic] relevance merely must be above zero.” E.S.S. Ent.,

547 F.3d at 1100. Punchbowl therefore understandably

focuses its argument on Rogers’s second prong. That prong

of Rogers “points directly at the purpose of trademark law,

namely to ‘avoid confusion in the marketplace by allowing

a trademark owner to prevent others from duping consumers

into buying a product they mistakenly believe is sponsored

by the trademark owner.’” Id. (quoting Walking Mt. Prods.,

353 F.3d at 806).

Accordingly, under our cases the “relevant question . . .

is whether [Punchbowl News] would confuse its [customers]

into thinking that [Punchbowl] is somehow behind

[Punchbowl News] or that it sponsors [AJ Press’s]

product[s].” Id. But it is not enough that AJ Press uses

“Punchbowl” in the name of its publication. We have been

careful to note that “the mere use of a trademark alone cannot

suffice to make such use explicitly misleading.” Id. (citing

Mattel, 296 F.3d at 902). Otherwise, “the First Amendment

would provide no defense at all,” “render[ing] Rogers a

nullity.” Id. at 1099 (quotations omitted). Instead, the

“explicitly misleading” component of Rogers sets “a high

bar that requires the use to be ‘an explicit indication, overt

claim, or explicit misstatement’ about the source of the

work.” Dr. Seuss, 983 F.3d at 462 (quoting Brown, 724 F.3d

at 1245).

Because the use of a trademark alone is not dispositive,

we weigh two primary considerations in evaluating whether

the junior use is explicitly misleading: “(1) ‘the degree to

which the junior user uses the mark in the same way as the

senior user’ and (2) ‘the extent to which the junior user has

added his or her own expressive content to the work beyond

the mark itself.’” Id. (quoting Gordon, 909 F.3d at 270–71).

PUNCHBOWL, INC. V. AJ PRESS, LLC 13

However, “[t]his is not a mechanical test,” and “all of the

relevant facts and circumstances must be considered.”

Gordon, 909 F.3d at 269 (quotations omitted).

We first consider the degree to which AJ Press uses the

Mark in the same way as Punchbowl. Id. at 270. Here we

ask whether “the junior user has employed the mark in a

different context—[such as] in an entirely different

market—than the senior user.” Id. For example, we have

approved the use of Mattel’s Barbie mark in a pop song, see

Mattel, 296 F.3d at 902; the mark of a strip club in a video

game, E.S.S. Ent., 547 F.3d at 1100; and the mark of a record

label in a television series. Twentieth Century Fox, 875 F.3d

at 1196. In those circumstances, the “disparate use of the

mark was at most ‘only suggestive’ of the product’s source

and therefore did not outweigh the junior user’s First

Amendment interests.” Gordon, 909 F.3d at 270 (quoting

Rogers, 875 F.3d at 1000).

Punchbowl argues that AJ Press employs the Mark in the

same way Punchbowl does because both parties use the

Mark “as a brand” for “online communications services”

provided to “consumers of online services.” But “besides

this general similarity, they have nothing in common.”

E.S.S. Ent., 547 F.3d at 1100. The population consisting of

“consumers of online communication services” describes

virtually all consumers. If we were to apply Rogers’s second

prong at that high level of generality, as Punchbowl

advocates, we would dilute Rogers entirely. Nor do our

precedents indicate that is the right approach. Instead, in

past cases we have looked far more granularly at the

similarity of use. Gordon provides a good example. There,

we explained that both users employed the mark in the same

way because both used it “to identify the source of humorous

greeting cards in which the bottom line is ‘Honey Badger

don’t care.’” 909 F.3d at 271.

14 PUNCHBOWL, INC. V. AJ PRESS, LLC

Here, the parties’ uses of the name “Punchbowl” are

quite different. Punchbowl is a self-described “technology

company” with a “focus on celebrations, holidays, events

and memory-making.” In contrast, Punchbowl News is a

publication that provides newsletters, podcasts, and videos

in the fields of government and politics, with content geared

toward Washington insiders. This is not a case where AJ

Press is parodying Punchbowl (and even in the case of

parodies, we have held that Rogers forecloses liability, see

e.g., Mattel, 296 F.3d at 901). Instead, the parties have used

a “common English word,” Twentieth Century Fox, 875 F.3d

at 1198, to describe two different enterprises that do very

different things.

AJ Press also does not just use the word “Punchbowl,”

but Punchbowl News, and it repeatedly connects its use of

“Punchbowl” to its founders. We reject Punchbowl’s

assertion that AJ Press’s use of the mark with the word

“News” “does nothing to distinguish” Punchbowl News

from Punchbowl’s use of the mark. The companies’

ventures operate in different spaces, and Punchbowl News is

“at most ‘only suggestive’” of Punchbowl the greeting card

company. Gordon, 909 F.3d at 270 (quotations omitted).

Indeed, it is questionable whether Punchbowl News is

even suggestive of Punchbowl’s online greeting card

business at all. Even if a simple web browser search might

initially lead a consumer to the wrong company, there is no

indication that AJ Press has sought to tie Punchbowl News

to Punchbowl’s event planning products. AJ Press has thus

not “dup[ed] consumers into buying a product they

mistakenly believe is sponsored by the trademark owner.”

E.S.S. Ent., 547 F.3d at 1100 (quotations omitted).

In addition to the degree to which the junior and senior

users employ a mark in the same way, under Rogers’s

PUNCHBOWL, INC. V. AJ PRESS, LLC 15

second prong we look to “the extent to which the junior user

has added his or her own expressive content to the work

beyond the mark itself.” Gordon, 909 F.3d at 270.

Punchbowl contends that AJ Press’s use of (1) descriptive

terms such as “press” or “news,” (2) a slogan (“Power.

People. Politics.”), and (3) the founders’ names in

association with the Mark, “do not communicate ideas or

express points of view; nor do they add any distinctive

character to [AJ Press’s] use of the mark.” We do not find

this persuasive. These features, both individually and

collectively, plainly augment the expressive nature of the use

of the word “Punchbowl.” Indeed, as we explained above,

AJ Press selected Punchbowl News’s name, slogan, and logo

to reflect the subject matter and theme of the publication.

See id. at 269 (explaining that the inquiry focuses “on the

nature of the junior user’s behavior rather than on the impact

of the use” (quotations and alterations omitted)).

Moreover, and as we have explained, the concern that

consumers will “be ‘misled as to the source of [a] product’

is generally allayed when the mark is used as only one

component of a junior user’s larger expressive creation.”

Gordon, 909 F.3d at 270–71 (quoting Rogers, 875 F.2d at

998–99). Here, this is doubly true. The Punchbowl Mark is

only a part of Punchbowl News’s overall branding, which, as

noted, includes a slogan and a logo. In addition, Punchbowl

News’s “larger expressive creation” consists of its series of

newsletters, podcasts, and videos. Id. at 271. In that context,

the Mark “obviously serve[s] as only ‘one element of the

work and the junior user’s artistic expressions.’” Id.

(quoting Rogers, 875 F.2d at 1001) (alterations omitted).

Punchbowl News’s public association with its founders

further demonstrates that the use of the Mark is not explicitly

misleading. An expressive work is less likely to be

misleading when it clearly discloses its origin. See Dr.

16 PUNCHBOWL, INC. V. AJ PRESS, LLC

Seuss, 983 F.3d at 463 (finding a title not explicitly

misleading because, in part, “the cover conspicuously lists

[the actual creators], not Dr. Seuss, as authors”). Here,

Punchbowl News promotes its connection to its founders on

its website. For instance, the “About Us” page displays a

large image of the co-founders and states that “Punchbowl

News is a membership-based news community founded by

journalists and best-selling authors Jake Sherman and Anna

Palmer, and co-founded by veteran Capitol Hill reporter

John Bresnahan.” And Punchbowl News’s publications state

“by John Bresnahan, Anna Palmer, and Jake Sherman” at the

top of the page near Punchbowl News’s name.

Punchbowl responds that AJ Press does not always use

the founders’ names in conjunction with the Mark. In

particular, AJ Press does not mention the founders on

Punchbowl News’s homepage. This does not change our

analysis. AJ Press frequently publicizes Punchbowl News’s

association with its founders and attributes its content to

them. See Gordon, 909 F.3d at 269 (explaining that Rogers

“is not a mechanical test” and “all the relevant facts and

circumstances must be considered”). Any reasonable reader

of the Punchbowl News website would see the connection

between the publication and the founders; indeed, the

connection to three veteran political reporters is part of

Punchbowl News’s selling point. Nothing required AJ Press

to identify its founders at every possible turn to avoid

association with Punchbowl.

Contrary to Punchbowl’s argument, this case is very

different from Gordon, which “demonstrate[d] Rogers’s

outer limits.” Id. at 268. There, defendants used the

plaintiff’s trademarked catchphrase “Honey Badger don’t

care” as the core content of its greeting cards. Id. at 261. In

concluding there was “at least a triable issue of fact,” we

relied on the fact that the defendants “simply used

PUNCHBOWL, INC. V. AJ PRESS, LLC 17

[plaintiff’s] mark with minimal artistic expression of their

own, and used it in the same way that [plaintiff] was using

it—to identify the source of humorous greeting cards in

which the bottom line is ‘Honey Badger don’t care.’” Id. at

271. In at least some greeting cards, the plaintiff’s mark

“was used without any other text.” Id.

No similar facts are at play in this case. AJ Press uses

the Punchbowl Mark in conjunction with its own slogan, the

names of its founders, and its logo to develop its brand in a

distinct media market. See Dr. Seuss, 983 F.3d at 462–63

(distinguishing Gordon on similar grounds, even when the

defendant “used the marks in an illustrated book just as

Seuss did”). AJ Press’s disparate use of the Punchbowl

Mark sharply differentiates this case from Gordon. See

Gordon, 909 F.3d at 261 (noting that “on every prior

occasion in which we have applied the [Rogers] test, we

have found that it barred an infringement claim as a matter

of law”). This is not a case in which “the defendant’s

expressive work consisted of the mark and not much else.”

Dr. Seuss, 983 F.3d at 462 (describing Gordon).

In short, no reasonable buyer would believe that a

company that operates a D.C. insider news publication is

related to a “technology company” with a “focus on

celebrations, holidays, events and memory-making.” We

conclude that, under our precedents, AJ Press’s

incorporation of the Punchbowl Mark in its news

publication’s name is not explicitly misleading. This

resolves not only the Lanham Act claims, but the state law

claims as well. E.S.S. Ent., 547 F.3d at 1101.

C

Conceding that “evidence of actual confusion may not

be a primary consideration” under Rogers, Punchbowl

18 PUNCHBOWL, INC. V. AJ PRESS, LLC

nonetheless argues that this kind of evidence is germane “to

whether the parties are using the marks in similar ways.”

Specifically, Punchbowl contends that the district court erred

in determining that survey evidence supposedly

demonstrating actual consumer confusion is not relevant.

Punchbowl is mistaken.

In Brown, we explained that “[t]o be relevant, evidence

must relate to the nature of the behavior of the [junior] user,

not the impact of the use.” 724 F.3d at 1246. Consumer

confusion is a potential result—i.e., impact—of an explicitly

misleading mark. It does not prove the answer to the legal

question whether the use is explicitly misleading under

Rogers. See id. Accordingly, given the First Amendment

interests at stake, “[t]he Rogers test dr[aws] a balance in

favor of artistic expression and tolerates ‘the slight risk that

the use of the trademark might implicitly suggest

endorsement or sponsorship to some people.’” Dr. Seuss,

983 F.3d at 462 (quoting Rogers, 875 F.2d at 1000)

(alteration omitted). Our case law is thus clear that we may

not “conflate[] the second prong of the Rogers test with the

general . . . likelihood-of-confusion test, which applies

outside the Rogers context of expressive works.” Twentieth

Century Fox, 875 F.3d at 1199 (citing Mattel, 296 F.3d at

900).

Further, our decision in Brown directly rejected the

relevance of the type of survey data that Punchbowl seeks to

advance. In Brown, we explained that “a survey

demonstrating that consumers of the Madden NFL series

believed that [Jim] Brown endorsed the game . . . would not

support the claim that the use was explicitly misleading to

consumers.” 724 F.3d at 1246. Dr. Seuss provides another

example. See 983 F.3d at 462. There, we held that the title

of an allegedly infringing work was not explicitly misleading

while noting that “evidence of consumer confusion in [an]

PUNCHBOWL, INC. V. AJ PRESS, LLC 19

expert survey does not change the result.” Id. Punchbowl

argues that Dr. Seuss is distinguishable because the cover of

the junior users’ book in Dr. Seuss conspicuously listed the

junior users as the authors. But this limitation was not

dispositive in Dr. Seuss, and AJ Press here has

conspicuously associated its publication with its three

founders, as we discussed above.

Survey evidence of consumer confusion is thus not

relevant to the question of whether AJ Press’s use of the

Mark is explicitly misleading, which is a legal test for

assessing whether the Lanham Act applies. See Brown, 724

F.3d at 1246. Because AJ Press uses the Mark “in an entirely

different market” and as “only one component of the larger

expressive work,” Punchbowl News is not explicitly

misleading as to its source. Gordon, 909 F.3d at 270–71.

III

Finally, we address Punchbowl’s contention that the

district court erred in denying its request for a Rule 56(d)

continuance to allow for additional discovery. Punchbowl

sought discovery relating to: (1) whether AJ Press was aware

of Punchbowl’s use of the Mark; (2) the extent to which AJ

Press may have caused actual confusion in the market; and

(3) the degree to which AJ Press has used the Mark to

identify itself as the source for a broad range of products and

services. The district court’s denial of Punchbowl’s motion

was not an abuse of discretion.

Twentieth Century Fox forecloses any requested

continuance for discovery into AJ Press’s awareness of

Punchbowl’s use of the Mark. See 875 F.3d at 1199–1200

(explaining that “Fox’s reason for selecting the ‘Empire’

name” and “Fox’s prior knowledge of Empire’s trademarks”

are not “relevant to either prong of the Rogers test”). As

20 PUNCHBOWL, INC. V. AJ PRESS, LLC

discussed above, survey evidence of consumer confusion is

also not relevant to the Rogers analysis. See id. at 1199; Dr.

Seuss, 983 F.3d at 462; Brown, 724 F.3d at 1246.

Further discovery into the degree to which AJ Press uses

Punchbowl News as a source identifier was also not

necessary in these circumstances. As explained above,

Punchbowl’s source-identifier argument operates at the

wrong level of generality for the inquiry into whether the

parties’ uses are the same. Thus, the information sought was

not germane. Additionally, the record is already replete with

evidence as to how both companies used the name

“Punchbowl” in their operations. Accordingly, the district

court’s denial of a continuance to permit further discovery

was not an abuse of discretion.

* * *

For the foregoing reasons, the judgment of the district

court is

AFFIRMED.