Petition for Writ of Certiorari — Clemente Properties, Inc., et al., Petitioners v. Pedro R. Pierluisi-Urrutia, et al.

Supreme Court briefJun 25, 2026

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No. 25In the

Supreme Court of the United States

CLEMENTE PROPERTIES, INC., et al.,

Petitioners,

PEDRO R. PIERLUISI-URRUTIA,

GOVERNOR OF PUERTO RICO, et al.,

Respondents.

On Petition for a Writ of Certiorari to the

United States Court of A ppeals for the First Circuit

PETITION FOR A WRIT OF CERTIORARI

Tanaira Padilla-Rodriguez

Avenue Ponce de León 1225

VIG Tower, Suite 1500

San Juan, PR 00907

(787) 620-0527

tanairapadilla@yahoo.com

Wencong Fa

Counsel of Record

Ben Stormes

Travis Woods

Beacon Center of Tennessee

54 Music Square East,

Suite 125

Nashville, TN 37203

(615) 383-6431

wen@beacontn.org

Counsel for Petitioners

132062

(800) 274-3321 • (800) 359-6859

QUESTIONS PRESENTED

Puerto Rico took the trademark of baseball legend

Roberto Clemente to generate roughly 15 million dollars

in revenue. The Fifth Amendment protects property

“without any distinction between different types.” Horne

v. Department of Agriculture, 576 U.S. 350, 358 (2015).

But the First Circuit refused to apply per se principles

that would ordinarily apply to an appropriation of a

property right—all because the Clementes are seeking

redress for a taking of their intangible property rights.

The First Circuit endowed Puerto Rico with the sovereign

immunity of the States and held that the Lanham Act

did not properly abrogate that immunity—even though

“it is difficult to see how the same inherent sovereign

immunity that the States enjoy in federal court would

apply to Puerto Rico.” Fin. Oversight & Mgmt. Bd. for

Puerto Rico v. Centro de Periodismo Investigativo, Inc.,

598 U.S. 339, 354 (2023) (Thomas, J., dissenting).

The questions presented are:

W hether the Fi f th A mendment exempt s

intangible property from the per se rules that

govern takings of tangible property.

Whether Puerto Rico enjoys any form of immunity

from suit in federal court and, if so, whether the

Lanham Act abrogates that immunity.

PARTIES

Petitioners, plaintiffs-appellants below, are Clemente

Properties, Inc., 21 In Right, Inc., Roberto Clemente Jr.,

Luis Roberto Clemente, and Roberto Enrique Clemente.

Respondents, defendants-appellees below, are Pedro

R. Pierluisi-Urrutia, Governor of Puerto Rico, in his

official and individual capacity and as representative of

the Commonwealth of Puerto Rico; The Commonwealth

of Puerto Rico; Eileen M. Vélez-Vega, Secretary of the

Department of Transportation and Public Works, in her

official and individual capacity; Franciso Parés Alicea,

Secretary of the Department of the Treasury, in his

official and individual capacity; Ray J. Quioñes-Vázquez,

Secretary of the Department of Sports and Recreation,

in his official and individual capacity.

The Puerto Rico Convention Center District Authority

was a defendant-appellee in the proceedings below.

Petitioners believe the District Authority has no interest

in the outcome of this petition and has provided the notice

required by Rule 12.6.

iii

CORPORATE DISCLOSURE STATEMENT

Pursuant to Supreme Court Rule 29.6, Petitioners

certify that Clemente Properties, Inc. and 21 In Right,

Inc. have no parent corporations and no publicly held

company owns 10% or more of the stock of either entity.

Petitioners Roberto Clemente Jr., Luis Roberto Clemente,

and Roberto Enrique Clemente are natural persons.

STATEMENT OF RELATED PROCEEDINGS

The proceedings in the federal district and appellate

courts identified below are directly related to the abovecaptioned case in this Court.

Clemente Properties, Inc., et al. v. Pierluisi-Urrutia,

et al., No. 3:22-cv-01373-GMM (D.P.R. Sept. 22, 2023).

Clemente Properties, Inc., et al. v. Pierluisi-Urrutia,

et al., No. 23-1922 (1st Cir. Jan. 16, 2026).

Clemente Properties, Inc., et al. v. Pierluisi-Urrutia,

et al., No. 23-1922 (1st Cir. Feb. 25, 2026) (en banc).

TABLE OF CONTENTS

Page

QUESTIONS PRESENTED . . . . . . . . . . . . . . . . . . . . . . . i

PARTIES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ii

CORPORATE DISCLOSURE STATEMENT . . . . . . iii

STATEMENT OF RELATED PROCEEDINGS . . . . . iv

TABLE OF CONTENTS . . . . . . . . . . . . . . . . . . . . . . . . . v

TABLE OF APPENDICES . . . . . . . . . . . . . . . . . . . . . viii

TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . . ix

PETITION FOR A WRIT OF CERTIORARI . . . . . . . 1

OPINIONS BELOW . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3

JURISDICTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3

CONST I T U T IONA L A N D STAT U T ORY

PROVISIONS INVOLVED . . . . . . . . . . . . . . . . . . . . . 4

STATEMENT OF THE CASE . . . . . . . . . . . . . . . . . . . . 5

The Clementes and the Roberto Clemente

Trademark . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5

II. Puerto Rico’s Trademark Theft . . . . . . . . . . . . . . 6

III. Proceedings below . . . . . . . . . . . . . . . . . . . . . . . . . 8

Table of Contents

Page

REASONS FOR GRANTING THE PETITION . . . . 12

The Panel’s Conclusion That There Can

Never be a Categorical Taking of Intangible

Property Exacerbates Confusion Among

Lower Courts on an Important Issue That

is Squarely Presented in This Case . . . . . . . . . . 12

A. T h is Ca se P resent s a Q uest ion

That Has Perplexed Lower Courts

a nd T h at T h i s Cou r t H a s Not

Conclusively Resolved . . . . . . . . . . . . . . . . . 12

B. The Fifth A mendment Does Not

Exempt Intangible Property from

Per Se Takings Rules . . . . . . . . . . . . . . . . . 17

C. The Issue Presented is Important

and This Case is an Excellent Vehicle

for Addressing It . . . . . . . . . . . . . . . . . . . . . 23

II. Sovereign Immunity Does Not Bar the

Clementes’ Claims . . . . . . . . . . . . . . . . . . . . . . . . 26

A. P uer t o Rico is Not Ent it led t o

Sovereign Immunity . . . . . . . . . . . . . . . . . . 26

B. If Puerto Rico has Some Form of

Immunity in Federal Court, the

Lanham Act Abrogates It . . . . . . . . . . . . . . 29

vii

Table of Contents

Page

C. This Case Presents an Excellent

Vehicle to Address an Issue of Vast

Importance . . . . . . . . . . . . . . . . . . . . . . . . . . 32

CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 34

viii

TABLE OF APPENDICES

Page

A P P E N DI X A — O P I N ION O F T H E

UNITED STATES COURT OF

A PPEALS FOR THE FIRST CIRCUIT,

FILED JANUARY 16, 2026 . . . . . . . . . . . . . . . . . . . 1a

A P P E N DI X B — O P I N ION O F T H E

UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF PUERTO RICO,

FILED SEPTEMBER 22, 2023 . . . . . . . . . . . . . . . 95a

A PPENDI X C — J U DGMENT OF THE

UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF PUERTO RICO,

FILED SEPTEMBER 22, 2023 . . . . . . . . . . . . . . 162a

A PPEN DI X D — OR DER OF T H E

UNITED STATES COURT OF

A PPEALS FOR THE FIRST CIRCUIT,

ENTERED FEBRUARY 25, 2026 . . . . . . . . . . . . 164a

TABLE OF CITED AUTHORITIES

Page

Cases

Alden v. Maine,

527 U.S. 706 (1999) . . . . . . . . . . . . . . . . . . . . . . . . 26, 27

Allen v. Cooper,

589 U.S. 248 (2020) . . . . . . . . . . . . . . . . . . . . . . . . . . . 32

Am. Ins. Co. v. 356 Bales of Cotton,

26 U.S. 511 (1828) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 30

Application of Deister Concentrator Co.,

289 F.2d 496 (C.C.P.A. 1961) . . . . . . . . . . . . . . . . . 2, 18

CCA Assocs. v. United States,

667 F.3d 1239 (Fed. Cir. 2011) . . . . . . . . . . . . . . . . . . 23

Cedar Point Nursery v. Hassid,

594 U.S. 139 (2021) . . . . . . . . 2, 11, 14, 15, 17, 18, 21, 22

Cedar Point Nursery v. Shiroma,

923 F.3d 524 (9th Cir. 2019) . . . . . . . . . . . . . . . . . . . . 21

Colony Cove Properties, LLC v. City of Carson,

888 F.3d 445 (9th Cir. 2018) . . . . . . . . . . . . . . . . . . . . 23

Commonwealth of Puerto Rico v. Sanchez Valle,

579 U.S. 59 (2016) . . . . . . . . . . . . . . . . . . . . . . . . . 27, 31

D.C. v. Carter,

409 U.S. 418 (1973) . . . . . . . . . . . . . . . . . . . . . . . . . . . 27

Cited Authorities

Page

Ex Parte Young,

209 U.S. 123 (1908) . . . . . . . . . . . . . . . . . . . . . . . . . . . 29

Ezratty v. Com. of Puerto Rico,

648 F.2d 770 (1st Cir. 1981) . . . . . . . . . . . . . . . . . . . . 27

Fin. Oversight & Mgmt. Bd. for Puerto Rico v.

Centro de Periodismo Investigativo, Inc.,

598 U.S. 339 (2023) . . . . . . . . . . . . . . 2, 3, 26-28, 32, 33

Fla. Prepaid Postsecondary Educ. Expense Bd. v.

Coll. Sav. Bank,

527 U.S. 627 (1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . 29

Hanover Star Milling Co. v. Metcalf,

240 U.S. 403 (1916) . . . . . . . . . . . . . . . . . . . . . . . . 17, 23

Horne v. Department of Agriculture,

576 U.S. 350 (2015) . . . . . . . . . . . . . . . . . 2, 13-15, 17, 22

In re Deister Concentrator Co.,

289 F.2d 496 (C.C.P.A. 1961) . . . . . . . . . . . . . . . . . . . 24

In re San Juan Dupont Plaza Hotel Fire Litigation,

888 F.2d 940 (1st Cir. 1989) . . . . . . . . . . . . . . . . . . . . 33

In re Trade-Mark Cases,

100 U.S. 82 (1879) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25

James v. Campbell,

104 U.S. 356 (1882) . . . . . . . . . . . . . . . . . . . . . . . . . . . 14

Cited Authorities

Page

Jim Olive Photography v.

University of Houston System,

624 S.W.3d 764 (Tex. 2021) . . . . . . . . . . . . . . . . . . 16, 20

Jusino Mercado v. Commonwealth of Puerto Rico,

214 F.3d 34 (1st Cir. 2000) . . . . . . . . . . . . . . . . . . . . . 31

King v. United States,

151 F.4th 1348 (Fed Cir. 2025) . . . . . . . . . . . . . . . . . . 16

Lac du Flambeau Band of Lake Superior

Chippewa Indians v. Coughlin,

599 U.S. 382 (2023) . . . . . . . . . . . . . . . . . . . . . . . . 28-30

Lucas v. S.C. Coastal Council,

505 U.S. 1003 (1992) . . . . . . . . . . . . . . . . . . . . . . . . . . 10

Maysonet-Robles v. Cabrero,

323 F.3d 43 (1st Cir. 2003) . . . . . . . . . . . . . . . . . . . . . 33

McLean v. Fleming,

96 U.S. 245 (1877) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17

Michigan v. Bay Mills Indian Cmty.,

572 U.S. 782 (2014) . . . . . . . . . . . . . . . . . . . . . . . . . . . 28

Miya Water Projects Netherlands B.V. v.

Fin. Oversight & Mgmt. Bd. for Puerto Rico,

138 F.4th 49 (1st Cir. 2025) . . . . . . . . . . . . . . . . . . . . . 33

xii

Cited Authorities

Page

Monongahela Navigation Co. v. United States,

148 U.S. 312 (1893) . . . . . . . . . . . . . . . . . . . . . . . . . . . 19

Ngiraingas v. Sanchez,

495 U.S. 182 (1990) . . . . . . . . . . . . . . . . . . . . . . . . . 3, 28

Nollan v. California Coastal Comm’n,

483 U.S. 825 (1987) . . . . . . . . . . . . . . . . . . . . . . . . 18, 21

Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc.,

469 U.S. 189 (1985) . . . . . . . . . . . . . . . . . . . . . . . . . . . 23

Penn Cent. Transp. Co. v. City of New York,

438 U.S. 104 (1978) . . . . . . . . . 10, 12, 13, 15, 17, 19, 23

People of Porto Rico v. Rosaly y Castillo,

227 U.S. 270 (1913) . . . . . . . . . . . . . . . . . . . . . . . . . . . 28

Philip Morris, Inc. v. Reilly,

312 F.3d 24 (1st Cir. 2002) . . . . . . . . . . . . . . . . . . 13, 15

Qualitex Co. v. Jacobson Products Co., Inc.,

514 U.S. 159 (1995) . . . . . . . . . . . . . . . . . . . . . . . . . . . 25

Ruckelshaus v. Monsanto Co.,

467 U.S. 986 (1984) . . . . . . . . . . . . . 2, 12, 13, 15-19, 22

Tahoe-Sierra Pres. Council, Inc. v.

Tahoe Reg’l Plan. Agency,

535 U.S. 302 (2002) . . . . . . . . . . . . . . . . . . . . . . . . 10, 19

xiii

Cited Authorities

Page

Trusted Integration, Inc. v. U.S.,

679 F.Supp.2d 70 (D.D.C. 2010) . . . . . . . . . . . . . . . . . 30

United States v. General Motors Corp.,

323 U.S. 373 (1945) . . . . . . . . . . . . . . . . . . . . . . . . 20, 21

United States v. Vaello Madero,

596 U.S. 159 (2022) . . . . . . . . . . . . . . . . . . . . . . . . . . . 31

Ursulich v. Puerto Rico Nat. Guard,

384 F. Supp. 736 (D.P.R. 1974) . . . . . . . . . . . . . . . 27, 28

Vidal v. Elster,

602 U.S. 286 (2024) . . . . . . . . . . . . . . . . . . . . . 18, 21, 25

Virginia Off. for Prot. & Advoc. v. Stewart,

563 U.S. 247 (2011) . . . . . . . . . . . . . . . . . . . . . . . . . . . 26

Walker v.

Texas Div., Sons of Confederate Veterans, Inc.,

576 U.S. 200 (2015) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9

West River Bridge Company v. Dix,

47 U.S. 507 (1848) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19

Windmar PV Energy, Inc. v.

Solar Now Puerto Rico, LLC,

No. CV 24-1570 (RAM), 2025 WL 725078

(D.P.R. Mar. 6, 2025) . . . . . . . . . . . . . . . . . . . . . . . . . . 31

xiv

Cited Authorities

Page

Constitutional Provisions

U.S. Const. amend. V . . . . . . . . . . . . . . 2, 4, 8, 9, 12, 17, 19

U.S. Const. amend. V, Art. IV, § 3, cl. 2 . . . . .4, 27, 28, 31, 32

Statutes and Other Authorities

15 U.S.C. § 1122(a) . . . . . . . . . . . . . . . . . . 3, 4, 9, 29, 30, 32

15 U.S.C. § 1122(b) . . . . . . . . . . . . . . . . . . . . . 10, 29, 31, 32

15 U.S.C. § 1127 . . . . . . . . . . . . . . . . . . . . . . . 3, 4, 9, 29-31

28 U.S.C. § 1254(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

29 U.S.C. § 203(c) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 31

42 U.S.C. § 1983 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28

48 U.S.C. § 2144(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27

Thomas F. Cotter, Do Federal Uses of Intellectual

Property Implicate the Fifth Amendment?,

50 Fla. L. Rev. 529 (1998) . . . . . . . . . . . . . . . . . . . . . . 20

Pranav Desai et al.,

The Value of Trademarks (2025) . . . . . . . . . . . . . 23

Pltfs’ Opposition at 19–20, Clemente Props., Inc.

v. Pierluisi Urrutia, ECF No. 45, No. 22-1373

(D.P.R. Feb. 24, 2023) . . . . . . . . . . . . . . . . . . . . . . . . . 29

PETITION FOR A WRIT OF CERTIORARI

Roberto Clemente is a baseball legend. Known for his

work on and off the field, Clemente accrued his 3,000th

hit in September 1972. Three months later, he died in a

plane crash while delivering aid to earthquake victims

in Nicaragua. Petitioners—the adult sons of Roberto

Clemente and their companies—have used the Roberto

Clemente trademark to protect their father’s legacy.

Puerto Rico took the trademark for itself. It forced

Puerto Rico motorists to pay for the Roberto Clemente

trademark imprinted on license plates and tags, generating

15 million dollars for Puerto Rico and resentment toward

the Clementes—who Puerto Ricans thought were to blame

for a fee levied on them during dire economic times. To

make matters worse, Puerto Rico intends to use the

money to create a Roberto Clemente Sports District, an

unauthorized imitation of a sports district that Clemente

himself created long ago.

The First Circuit dismissed the Clementes’ takings

claim because it held that per se taking rules—which this

Court routinely applies in cases involving government

appropriation of property—could not apply because the

property here is intangible. The panel also held that

Puerto Rico officials could not be liable in their official

capacities because Puerto Rico had the same sovereign

immunity as the states, and the Lanham Act did not

properly abrogate that immunity.

Both issues are worthy of this Court’s review. First,

this Court has never resolved whether per se rules that

apply to “classic takings” of property cease to exist when

the property the government has taken is intangible. This

Court’s recent per se cases involved tangible property.

See Cedar Point Nursery v. Hassid, 594 U.S. 139, 143

(2021); Horne, 576 U.S. at 354. And its earlier decision in

Ruckelshaus v. Monsanto Co., 467 U.S. 986 (1984), has

been interpreted in different ways by different jurists.

Conflicting decisions from the First Circuit, the Federal

Circuit, and the Texas Supreme Court underscore the

confusion on a question of undeniable importance. Left

unanswered, the First Circuit’s ruling would invite

government to take trademarks on demand—checked only

by a multi-factor balancing test that allows government to

destroy much in value and pay nothing in return.

The Fifth Amendment protects both tangible and

intangible property, Monsanto, 467 U.S. at 1003, “without

any distinction between different types.” Horne, 576

U.S. at 358. The government may not appropriate a right

to exclude without triggering a per se requirement of

compensation. Cedar Point, 594 U.S. at 149. And that right

is even more important in the context of trademarks. A

trademark reflects its owner’s right to exclusive use, so

a mark that “all are free to use cannot be a trademark.”

Application of Deister Concentrator Co., 289 F.2d 496,

501 n.5 (C.C.P.A. 1961).

This Court should also resolve the immunity issue it

reserved three years ago. See Fin. Oversight & Mgmt. Bd.

for Puerto Rico v. Centro de Periodismo Investigativo,

Inc., 598 U.S. 339, 346 & n.2 (2023). “[I]t is difficult to see

how the same inherent sovereign immunity that the States

enjoy in federal court would apply to Puerto Rico.” Id. at

354 (Thomas, J., dissenting). Puerto Rico is a territory.

Although it “may retain common-law sovereign immunity

against claims raised in its own courts under its own local

laws,” it cannot rely on immunity to shield it from “a suit

in federal court based on federal law.” Ngiraingas v.

Sanchez, 495 U.S. 182, 205 (1990) (Brennan, J., dissenting).

At a minimum, the Lanham Act abrogated Puerto Rico’s

common law immunity when it provided a clear statement

that the Act waives the sovereign immunity of the United

States, 15 U.S.C. § 1122(a), which includes territories like

Puerto Rico. See id. § 1127.

This case presents the Court with an excellent vehicle

to address an important question. This case, unlike Fin.

Oversight & Mgmt. Bd., allows the Court to resolve Puerto

Rico’s immunity in a case in which Puerto Rico is a party.

598 U.S. at 346 n.2. Citizens in all fifty states know when

they can take their government to federal court to redress

violations of federal law. Puerto Ricans deserve the same

kind of certainty.

OPINIONS BELOW

The court of appeals’ order denying Respondents’

petition for rehearing and rehearing en banc (App.

164a–165a) is unpublished. The panel opinion of the court

of appeals (App. 1a–94a) is reported at 165 F.4th 1. The

opinion of the district court (App. 95a–161a) is reported

at 693 F.Supp.3d 215.

JURISDICTION

The United States Court of Appeals for the First

Circuit entered judgment on January 16, 2026, and issued

an order denying Respondents’ motion for rehearing and

rehearing en banc on February 25, 2026. Justice Jackson

granted an extension to file the Petition for Certiorari to

June 25, 2026. This Court’s jurisdiction rests on 28 U.S.C.

§ 1254(1).

CONSTITUTIONAL AND STATUTORY

PROVISIONS INVOLVED

The Fifth Amendment to the U.S. Constitution

provides, “nor shall private property be taken for public

use, without just compensation.” U.S. Const. amend. V.

Article IV, Section III of the U.S. Constitution

provides, “The Congress shall have Power to dispose of

and make all needful Rules and Regulations respecting

the Territory or other Property belonging to the United

States.”

The Lanham Act specifies that “The United States, all

agencies and instrumentalities thereof, and all individuals,

firms, corporations, other persons acting for the United

States and with the authorization and consent of the

United States, shall not be immune from suit in Federal

or State court by any person, including any governmental

or nongovernmental entity, for any violation under this

chapter.” 15 U.S.C. § 1122(a). The Act further provides

that, unless the contrary is plainly apparent from context,

“[t]he United States includes and embraces all territory

which is under its jurisdiction and control.” 15 U.S.C.

§ 1127.

STATEMENT OF THE CASE

The Clementes and the Rober to Clemente

Trademark

Roberto Clemente is a baseball legend. A native of

Puerto Rico, Clemente won several batting titles, Gold

Glove awards, two World Series championship trophies,

a Most Valuable Player award in 1966, and a World Series

Most Valuable Player award in 1971. Amended Complaint

¶ 3.2. Over his nearly two decades with the Pittsburgh

Pirates, Clemente amassed 3,000 hits and became the

first Latin-American player inducted into the National

Baseball Hall of Fame. Id.; App. 4a.

Clemente was also a champion of humanitarian

causes. App. 4a. In 1972, Clemente died in a plane crash

while en route to deliver aid to earthquake victims in

Nicaragua. Id. For the past 54 years, his widow (who

passed away before the events in this case) and their three

adult sons—Petitioners Roberto Clemente Junior, Luis

Roberto Clemente, and Roberto Enrique Clemente—have

worked tirelessly to protect Roberto Clemente’s legacy

and support the causes he believed in. Id.

To that end, the Clementes control two corporations,

Petitioners Clemente Properties, Inc. and 21 In Right, Inc.,

which help to protect the Roberto Clemente trademark,

safeguard his legacy, and promote his philanthropy.1 Id.

1. For ease of reference, this petition refers to Petitioners

Roberto Clemente Junior, Luis Roberto Clemente, and Roberto

Enrique Clemente as “the Clementes” and all Respondents as “Puerto

Rico.” The brief also uses “trademark” to denote “trademark, name,

image, and likeness” unless context indicates otherwise.

The Clementes have diligently protected the mark—which

has been in use since 1955—from misuse. Amended Compl.

¶¶ 3.3, 3.18–3.19. Clemente Properties registered the

trademark with the United States Patent and Trademark

Office, and 21 In Right licenses the mark. App. 4a. The

Clementes retained the services of a leading intellectual

property management agency, CMG Worldwide, Inc.,

to remedy unauthorized use of the Roberto Clemente

mark. ¶ 3.19. The agency recently secured the domain

name RobertoClemente.com from an unauthorized user.

Id. ¶ 3.20. These efforts have maintained the value of the

Roberto Clemente trademark, which is now routinely

licensed for events, products, awards, and more. Id. ¶ 3.14.

For instance, the Clementes use the trademark for the

Roberto Clemente Foundation and the Roberto Clemente

Museum in Pittsburgh to protect Roberto Clemente’s

legacy and continue his humanitarian work. Id. ¶ 3.13.

II. Puerto Rico’s Trademark Theft

In 2021, Puerto Rico enacted two resolutions that

allowed it to use the Roberto Clemente trademark

w ithout the Clementes’ per mission. App. 6a –7a .

Resolution No. 16 forced Puerto Ricans acquiring a new

license plate in 2022 to pay an additional 21 dollars for

an image of Roberto Clemente with the number “21”

(for Clemente’s jersey number), the number “50,” the

word “anniversary,” and the phrase “3,000 hits.” App.

6a. Resolution No. 17 added a mandatory $5 surcharge

to registration tags issued in 2022 in return for an

image (featured in the tag) that commemorated the

50-year anniversary of Clemente’s 3,000th hit. Id. The

plate and tag included an image of Roberto Clemente;

the words “Clemente,” “anniversary,” and “3000 hits”;

and the numbers “21” and “50.” Id. The Department of

Transportation issued vehicle permits that referred to a

Roberto Clemente fund, which is not associated with the

Clemente family, next to the $5 charge. Amended Compl.

¶ 3.39. The Resolutions placed the money into a Roberto

Clemente Sports District Fund, which the Department

of Treasury administers for the exclusive use of the

Department of Sports and Recreation. App. 6a–7a. 2

These laws shocked the Clementes, who have been

opposed to the fees imposed by Resolutions 16 and

17—particularly when many people in Puerto Rico were

going through hard economic times. Amended Compl.

¶ 3.46. They proposed funding Ciudad Deportiva (a

sports park created by Roberto Clemente himself) by

issuing commemorative license plates, which would be

available to the people of Puerto Rico in exchange for a

voluntary donation of $2.10. Id. ¶ 3.50. The Clementes

informed Governor Pierluisi that they never authorized

the government to use Roberto Clemente’s trademark in

license plates or registration labels. Id. ¶ 3.52. Ignoring

the Clementes’ pleas, the Governor signed the resolutions

into law. Id. ¶¶ 3.54–3.55. Puerto Rico’s unauthorized

use of the Roberto Clemente trademark netted the

government 15 million dollars. Id. ¶ 3.110. None of it went

to the Clementes.

2. Puerto Rico claims that it will create the Roberto Clemente

Sports District to honor the memory of Roberto Clemente. But

the Clementes have made it clear to government officials that they

oppose Puerto Rico’s creation of the district, ¶¶ 3.84–3.85, which

would be an unauthorized use of the Clemente trademark for a

replica of Ciudad Deportiva Roberto Clemente.

Even worse, Puerto Rico tarnished the Roberto

Clemente trademark. Confused Puerto Ricans now

resent ed the Clement es for contr ibuting to the

impoverishment of Puerto Rico by collecting money

during the financial crisis—even though the Clementes

had opposed Puerto Rico’s Roberto Clemente license plate

and registration label program and received none of its

proceeds. Id. ¶¶ 3.45–3.47. And the trademark has become

embroiled in the dispute between the government and

the Clementes—one that the Clementes sought to avoid

through private discussions with the Governor’s office.

Id. ¶ 3.99. All in all, Puerto Rico’s misuse of the Clemente

trademark hinders the Clementes’ ability to do business,

generate income, and protect Roberto Clemente’s legacy.

Id. ¶¶ 3.103, 3.108.

III. Proceedings below

The Clementes sued in the United States District

Court for the District of Puerto Rico. As relevant here,

the Clementes asserted that Puerto Rico’s appropriation

of the Roberto Clemente trademark violated the Takings

Clause of the Fifth Amendment and several provisions of

the Lanham Act. The Clementes sought monetary relief

against Puerto Rico and its officials in both their individual

and official capacities. 3

The district court dismissed. The court first noted

that it was bound by First Circuit precedent extending

3. The Authority, the Secretary of the Department of Sports

and Recreation, and the other Puerto Rico officials separately

moved to dismiss, see Dkt. 36, 38, 42, which the Clementes opposed

in separate responses. See Dkt. 44, 45, 53.

the doctrine of state sovereign immunity to Puerto Rico.

App. 117a–18a. The court held that the Clementes’ claims

could not go forward against Respondents in their official

capacities because it thought that neither the Lanham Act

nor the Takings Clause abrogates Puerto Rico’s sovereign

immunity. App. 119a–24a, 147a. And the court refused

to allow the Clementes’ claims against Respondents in

their personal capacities to proceed because the court

held that the Clementes didn’t allege a plausible violation

of the Fifth Amendment or the Lanham Act. App. 155a.

As for the Lanham Act claims, the court cited a First

Amendment case as support for its conclusion that

“issuing motor vehicle license plates and tags cannot be

considered commercial use, as it is a clear government

activity.” App. 136a (citing Walker v. Texas Div., Sons of

Confederate Veterans, Inc., 576 U.S. 200 (2015)). The court

also thought the Clementes’ takings claim could be “easily

dismissed.” App. 147a. In a single sentence of analysis, the

court reasoned that Puerto Rico’s unauthorized use of the

Clemente trademark did not “deprive Plaintiffs of any use

of their trademarks” since “Plaintiffs remain free to use

their trademarks as they wish.” App. 148a.

The First Circuit affirmed in part and reversed in

part. As relevant here, the panel affirmed dismissal

against Respondents in their official capacities. The

court held that it was bound by circuit precedent that

Puerto Rico “has [sovereign] immunity to suits in federal

court equal to that of the states.” App. 66a–67a. It also

rejected the Clementes’ claim that Section 1122(a), which

waives sovereign immunity for the United States and

“all territory which is under its jurisdiction and control,”

15 U.S.C. § 1127, waived Puerto Rico’s immunity. App.

77a–82a. Instead, the panel held that it was “more

plausible that Puerto Rico’s covered by Section 1122(b),”

App. 82a, which waives the immunity of “[a]ny state.” 15

U.S.C. § 1122(b).

The panel affirmed dismissal of the takings claim.

As the court noted, this Court’s precedents distinguish

between “physical takings and regulatory takings.” App.

55a (citing Tahoe-Sierra Pres. Council, Inc. v. Tahoe Reg’l

Plan. Agency, 535 U.S. 302, 321 (2002)). Physical takings,

which occur when “government physically takes possession

of an interest in property for some public purpose,” trigger

“a categorical duty to compensate the former owner” and

“can be resolved via the straightforward application of

per se rules.” App. 55a (quotation marks omitted). “By

contrast, regulatory takings generally involve ad hoc,

factual inquiries that allow careful examination and

weighing of all the relevant circumstances.” App. 55a

(quotation marks omitted); see also Penn Cent. Transp.

Co. v. City of New York, 438 U.S. 104, 124 (1978). A less

common type of regulatory taking, which also triggers a

categorical duty to compensate, occurs where a “regulation

denies all economically beneficial or productive use” of the

plaintiff’s property. App. 56a (citing Lucas v. S.C. Coastal

Council, 505 U.S. 1003, 1015 (1992)).

The panel rejected the Clementes’ argument that

Puerto Rico’s appropriation of the Clemente trademark

triggered Puerto Rico’s categorical duty to pay just

compensation. As the panel saw it, “infringement of

intangible intellectual property” could not “be analyzed

using the same categorical approach as takings involving

the physical possession or occupation of property.” App.

58a. It reasoned that “intrusion onto [physical] property

. . . ousts the property owner of their rights in a way

that infringement of intangible property does not.” App.

58. The panel was not persuaded by the Clementes’

argument that Puerto Rico’s appropriation of their

trademark destroyed their right to exclude and amounted

to a per se taking under this Court’s precedent in Cedar

Point Nursery v. Hassid, 594 U.S. 139 (2021). The panel

acknowledged the argument’s “first-blush allure,” App.

59a, but thought it “conceptually meaningful that as long

as an organizer was physically present on the property, it

meant that the owners could not use or occupy whatever

square foot of land that organizer’s boots were planted

on.” App. 61a. The panel refused to apply per se rules in

this case because “the property is intangible.” App. 61a.4

The panel reversed other portions of the district

court’s decision. The court held that the Clementes pled

a plausible violation of several provisions of the Lanham

Act. App. 15a–53a. The panel concluded (over a partial

dissent) that Respondents waived any argument on

qualified immunity because they failed to raise it when

they moved to dismiss. See App. 83a–87a. It remanded

the case to the district court so that the Clementes could

press their case against Respondents in their individual

capacities. Respondents petitioned the First Circuit for

rehearing, which the court summarily denied. App. 165a.

4. The panel saw no need to decide the immunity issues given

its resolution of the takings claims on the merits. App. 54a.

REASONS FOR GRANTING THE PETITION

The Panel’s Conclusion That There Can Never

be a Categorical Taking of Intangible Property

Exacerbates Confusion Among Lower Courts on

an Important Issue That is Squarely Presented in

This Case

This Case Presents a Question That Has

Perplexed Lower Courts and That This Court

Has Not Conclusively Resolved

This Court has never resolved whether owners of

intangible property can assert per se takings claims under

the Fifth Amendment. In Ruckelshaus v. Monsanto Co.,

the Court held that the government’s use and disclosure

of trade secrets could constitute a taking under the Fifth

Amendment. 467 U.S. 986, 1016 (1984). Although trade

secrets were “admittedly intangible,” this Court recounted

that it has found many “other kinds of intangible interests

to be property for purposes of the Fifth Amendment’s

Taking Clause.” Id. at 1003 (listing liens and contracts as

examples). And the Court emphasized that treating trade

secrets as property protected by the Fifth Amendment “is

consonant with a notion of property that extends beyond

land and tangible goods and includes the products of an

individual’s [labor] and invention.” Id. (quotation marks

omitted).

After concluding that Monsanto had a property

interest in the data it had submitted to the EPA, this Court

confronted the question of whether the EPA’s use and

disclosure of the data constituted a taking. See id. at 1004.

Although this Court recited the Penn Central factors, it

held that the force of one factor was so overwhelming that

it disposed of the entire takings claim. Id. at 1005.

From 1972 to 1978, the statute prohibited the EPA from

disclosing or considering trade secrets from applicants

such as Monsanto. See id. at 1010–11. This formed the

basis of a reasonable investment-backed expectation over

Monsanto’s trade-secret data, which EPA would frustrate

with use or disclosure. Id. at 1011. This Court rejected the

notion—now common in regulatory takings cases—that

there could be no taking because Monsanto held residual

value in its data even after they are disclosed. See id. at

1012 (noting that it was “irrelevant” that Monsanto could

still use data as bases from which to develop new products

or refine old products, as marketing and advertising tools,

or as information necessary to obtain registration in

foreign countries). Instead, what mattered was that “the

right to exclude others is central to the very definition of

the property interest” in a trade secret. Id. at 1011. The

holder thus loses his property interest once the secret is

divulged or others are allowed to use it. Id. Monsanto has

confused judges. The panel below thought that it called

for a multi-factor balancing test to analyze whether the

appropriation of intangible property works a taking. See

App. 64a (concluding that Monsanto analyzed a trade

secrets-based claim under the Penn Central factors). As

another judge saw it, Monsanto’s analysis “mirror[ed] a

per se takings analysis.” Philip Morris, Inc. v. Reilly,

312 F.3d 24, 51 n.26 (1st Cir. 2002) (Selya, J., concurring).

This Court’s more recent cases have not conclusively

resolved the question. In Horne v. Department of

Agriculture, this Court held that a law requiring growers

to set aside a portion of their crops for the government

constituted a per se taking. 576 U.S. 350, 354, 361 (2015).

The Court reinforced “the longstanding distinction

between government acquisitions of property and

regulations.” Id. at 361 (quotation marks omitted). Where

the government appropriates (rather than regulates)

property, it works a “per se taking that requires just

compensation.” Id. at 358. Citing a precedent involving

an alleged appropriation of a patent, this Court rejected

the notion that “personal property was any less protected

against physical appropriation than real property.” Id. at

359 (citing James v. Campbell, 104 U.S. 356, 358 (1882)).

Instead, the Takings Clause “protects ‘private property’

without any distinction between different types.” Id. at

358.

In Cedar Point Nursery v. Hassid, this Court held

that a regulation requiring agricultural employers to allow

union organizers intermittent access onto their property

constituted a per se taking. 594 U.S. 139, 143, 152 (2021).

The Court again distinguished between government

appropriation of “private property for itself or a third

party” and “regulations that restrict an owner’s ability to

use his own property.” Id. at 148. “Whenever a regulation

results in a physical appropriation of property, a per se

taking has occurred, and Penn Central has no place.” Id.

at 149. This Court emphasized that it has “long treated

government-authorized physical invasions as takings

requiring just compensation” because of “the central

importance to property ownership of the right to exclude.”

Id. at 150. What mattered was that the growers would

have had the right to exclude union organizers without

the regulation, and the regulation took that right from

the growers. The logic of Horne and Cedar Point would

afford per se treatment to government appropriation

of intangible property—particularly where it destroys

the owner’s right to exclude. The panel below, however,

thought Horne and Cedar Point should be cabined to cases

involving tangible property. App. 58a.

1. The panel decision exacerbates confusion among

lower courts of last resort. As reflected in the decision

below, the First Circuit now recognizes a “meaningful

difference” between government appropriation of tangible

and intangible property. App. 60a–61a. Although the panel

below recognized that the Takings Clause protects both

forms of property, App. 63a, it held that per se rules were

categorically inapplicable to takings involving intangible

property. App. 63a–64a.

Judge Selya would have disagreed with that conclusion.

Philip Morris, Inc. v. Reilly, 312 F.3d 24, 51 (1st Cir. 2002)

(Selya, J., concurring). He saw “no principled reason to

refrain from extending per se takings analysis to alleged

takings” of intangible property. Id. (trade secrets).

Although this Court discussed the Penn Central factors

in concluding that there was a taking in Monsanto,

its “actions speak louder than words.” Id. at 51 n.26.

The Monsanto Court’s analysis “mirror[ed] a per se

takings analysis” because once it found that the “trade

secret holder possessed a reasonable investment-backed

expectation in its trade secrets, the Court determined

that such a taking, if not justly compensated, would be

unconstitutional.” Id. In Judge Selya’s view, confining

“per se takings analysis to cases involving real property”

establishes “a crude boundary with no compelling basis

in the law.” Id. at 51.

Like the panel below, the Supreme Court of Texas

bars intangible property owners from prevailing on a

per se takings claim. See App. 58a–61a. In Jim Olive

Photography v. University of Houston System, that

court rejected a professional photographer’s claim that

a university’s infringement of his copyright amounted

to a per se taking. 624 S.W.3d 764, 768, 777 (Tex. 2021).

The court interpreted Monsanto as applying a “multifactor regulatory taking analysis to determine that a

federal statute” effected a taking. Id. at 773. The court

distinguished this Court’s per se taking precedents by

positing that they involved “tangible property where

rights are more closely bound to the physical thing.” Id.

at 774. Because the government “does not take possession

or control of, or occupy,” a copyright, the court thought it

impossible to apply the per se taking doctrine in cases of

that “copyright is nonrivalrous, meaning that another

person can use it without simultaneously depriving anyone

else of its use”) (quotation marks omitted).

2. The Federal Circuit takes a different view. In

King v. United States, the court held that a law that

reduced the plaintiffs’ pension benefits did not work a

taking. 151 F.4th 1348, 1351 (Fed Cir. 2025). In discussing

per se takings, the court distinguished between “[p]hysical

or intangible personal property on the one hand, and thirdparty contract rights on the other.” Id. at 1360. Thus, while

the court ruled against the plaintiffs because their case

involved the “modification of contractual obligations owed

by third parties,” it suggested that the per se test would

apply in cases involving “the government’s appropriation

of specific physical or intangible property for its own use

or the use of others.” Id. at 1362.

B. The Fifth Amendment Does Not Exempt

Intangible Property from Per Se Takings Rules

The Fifth Amendment protects property “without

any distinction between different types.” Horne v.

Department of Agriculture, 576 U.S. 350, 358 (2015).

As this Court has explained, property owners do not

lose their Fifth Amendment rights merely because the

property they own is intangible. See Monsanto, 467 U.S.

at 1003 (collecting cases).

The first step in the takings analysis is discerning

whether government is “appropriating private property”

or merely regulating its use. Cedar Point Nursery v.

Hassid, 594 U.S. 139, 148 (2021). A court must balance

different factors to determine “whether a use restriction

effects a taking.” Id. (citing Penn Central, 438 U.S. at

124). By contrast, government appropriation of private

property trigger “a simple, per se rule: The government

must pay for what it takes.” Id.

There is no reason why per se taking rules cannot

cover takings of intangible property. Government may just

as easily take rights in intangible property as it may do

so in tangible property. See id. at 158 (“[A]ppropriation”

means “taking as one’s own”) (citing 1 Oxford English

Dictionary 587 (2d ed. 1989)) (emphasis in original). This

case is a prime example. Trademark owners establish

their trademarks through use, Hanover Star Milling

Co. v. Metcalf, 240 U.S. 403, 413 (1916), and thus possess

a valuable property interest in maintaining the goodwill

that they have built through their work. See McLean

v. Fleming, 96 U.S. 245, 252 (1877). This endeavor is

dependent on the ability of a trademark owner to exclude

others from using his mark. See id. “If the law will

not protect one’s right to exclude others from using an

alleged trademark, then he does not own a ‘trademark,’

for that which all are free to use cannot be a trademark.”

Application of Deister Concentrator Co., 289 F.2d 496,

501 n.5 (C.C.P.A. 1961); see also Monsanto, 467 U.S. at

1011 (“[T]he right to exclude” is also “central” to a trade

secret). Whenever “a person uses another’s mark, the

owner is robbed of the fruits of the reputation that he had

successfully labored to earn.” Vidal v. Elster, 602 U.S.

286, 306 (2024) (citation omitted).

Here, the Clementes have worked for decades to

maintain the goodwill that their father built through

athletic achievement and humanitarian work. Puerto

Rico took advantage of that goodwill—making roughly

15 million dollars from its year-long campaign to sell the

Roberto Clemente trademark. App. 49a. Puerto Rico’s use

of the Clemente mark also harmed the Clementes. Angry

Puerto Ricans resented the fees and thought (incorrectly)

the Clementes were to blame. App. 7a–8a. Puerto Rico’s

actions constitute an appropriation of the Clementes’

property rights. No one can seriously dispute that the

Clementes had a right to exclude others from using their

registered mark and that Puerto Rico enacted resolutions

that took that right from them. See Cedar Point, 594 U.S.

at 155.

By contrast, one could not portray Puerto Rico’s

appropriation of the Clemente trademark as a use

restriction without “us[ing] words in a manner that

deprives them of all their ordinary meaning.” Nollan v.

California Coastal Comm’n, 483 U.S. 825, 831 (1987). A

classic example of a use restriction limits what a property

owner can do with her property in efforts to curtail some

purported harm. See Penn Cent. Transp. Co., 438 U.S.

at 117–18 (preventing the construction of an office tower

to preserve a landmark). Here, however, Puerto Rico is

itself using the Roberto Clemente trademark so that it

can benefit from the goodwill that Clemente and his family

generated through decades of work.

History confirms that the government may work a per

se taking of intangible property. All agree that the Fifth

Amendment protects tangible and intangible property

rights alike. See Monsanto, 467 U.S. at 1003. This Court’s

per se takings doctrine is “as old as the Republic.”

Tahoe-Sierra Pres. Council, Inc. v. Tahoe Reg’l Plan.

Agency, 535 U.S. 302, 322 (2002). Its regulatory takings

jurisprudence “is of more recent vintage.” Id. Thus, a

rule that takings of intangible property are categorically

exempt from per se rules would mean that the Fifth

Amendment protected only tangible property until the

20th century. Not so. In Monongahela Navigation Co. v.

United States, this Court held that a “vested franchise

to receive tolls for its use” was “as much a vested right

of property as the ownership of the tangible property.”

148 U.S. 312, 344–45 (1893). Thus, “just compensation

requires payment for the franchise to take tolls, as well

as for the value of the tangible property.” Id. at 345. In

West River Bridge Company v. Dix, the Court observed

that a distinction between an appropriation of corporeal

(tangible) property and the like power in government to

extinguish intangible property “ha[d] no foundation in

reason.” 47 U.S. 507, 533–34 (1848). No historical basis

exists for the First Circuit’s conclusion that takings of

“intangible intellectual property” could not “be analyzed

using the same categorical approach as takings involving

the physical possession or occupation of property.” App.

58a

In holding that per se rules are categorically

inapplicable in cases involving intangible property, the

decision below veered off course in many places. The

panel concluded that this Court’s per se takings cases

“emphasize[] the unique nature of a property owner’s

rights over physical property and of any physical

possession or intrusion onto such property, which ousts the

property owner of their rights in a way that infringement

of intangible property does not.” App. 58a. In support,

the panel cited a Texas Supreme Court decision, which

the panel took to explain “how the ‘nonrivalrous’ nature

of copyright undermines any analogy between state

58a–59a (citing Jim Olive Photography, 624 S.W.3d at 776).

But the scholarship that the Texas Supreme Court relies

on for that conclusion refutes the conclusion that only

owners of physical property can assert a per se taking.

See Thomas F. Cotter, Do Federal Uses of Intellectual

Property Implicate the Fifth Amendment?, 50 Fla. L.

Rev. 529, 562–63 (1998). As the author acknowledges,

some forms of intellectual property, such as the right

of a celebrity to “market her image under the right of

publicity” or “the right to protect one’s trademark from

dilution” may be at least somewhat rivalrous because they

“depend[] in part upon the exclusive nature of that right”

Id. at 563 & n.206.

In any event, no basis exists for fixating on “physical

property” and “physical possession.” But see App. 58a.

The Takings Clause protects rights, not things. See

United States v. General Motors Corp., 323 U.S. 373,

377–78 (1945); see also id. at 378 (the Takings Clause

protects “every sort of interest the citizen may possess.”).

Government appropriation of an easement, for example,

constitutes a per se taking even if “no particular individual

is permitted to station himself permanently upon the

premises.” Nollan, 483 U.S. at 832. Because the taking

of an easement destroys the owner’s right to exclude, this

Court has never suggested that takings of easements

would be subject to a multi-factor balancing test only if

those who were allowed access declined to enjoy them. The

reasoning behind this Court’s per se takings cases can

easily be applied in cases involving intangible property.

Indeed, the government’s destruction of the right to

exclude may sometimes cause more harm to owners of

intangible property. A small, sporadically used easement

on the side of a massive, uninhabited property might do

little to deprive the owner of her use. But whenever “a

person uses another’s mark,” he robs the owner “of the

fruits of the reputation that he had successfully labored

to earn.” Vidal, 602 U.S. at 306.

The panel took the view that destruction of the

right to exclude only constitutes a per se taking when it

destroys the owner’s entire bundle of property rights.

App. 58a–59a. This Court’s cases say otherwise. Both the

dissent and the Ninth Circuit’s (later overruled) decision

in Cedar Point asserted that the plaintiffs “undermine[d]

their contention that the access regulation effects a taking

because they only allege that the regulation affects ‘one

strand of the bundle’ of property rights.” Cedar Point

Nursery v. Shiroma, 923 F.3d 524, 533 (9th Cir. 2019); see

also Cedar Point, 594 U.S. at 172 (Breyer, J., dissenting)

(concluding that “a taking is not inevitably found just

because the interference with property . . . affects the right

to exclude.”). But this Court held that the “right to exclude

falls within the category of interests that the Government

cannot take without compensation.” Id. at 151 (majority

opinion) (quotation marks and brackets omitted). 5

Monsanto does not call for a different result. Although

that decision recited the balancing factors, this Court

ended its analysis once it found a protected trade secret

and that the statutory assurances of confidentiality gave

rise to reasonable investment-backed expectations. 467

U.S. at 1012–13. This Court’s analysis turned not on a

multi-factor balancing test, but on the destruction of a

core property right—the right to exclude others from

valuable proprietary information. Id. Here, too, this

Court’s analysis can begin and end with the government’s

destruction of a core property right for trademarks: the

right to exclude others from using the mark.

In the end, the decision below rests on a distinction

between tangible and intangible property that this Court’s

precedents have never recognized. The panel’s decision

impermissibly relegated intangible property rights to

second-tier status. The Takings Clause, however, protects

private property “without any distinction between

different types.” Horne, 576 U.S. at 358. This Court

should reverse.

5. The panel’s premise that Puerto Rico’s appropriation of

the trademark did not affect the Clementes’ use strains credulity.

A trademark holder possesses a right to exclusive use of a

trademark. Puerto Rico’s destruction of that right tarnished the

mark and obliterated the goodwill that the Clementes have worked

to build for decades.

The Issue Presented is Important and This

Case is an Excellent Vehicle for Addressing It

The issue presented is important. Trademarks

protect an individual’s “right to the continued enjoyment

of his trade reputation and the goodwill that flows from

it.” Hanover Star Milling Co., 240 U.S. at 413; see also

Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S.

189, 198 (1985) (trademarks “secure to the owner of

the mark the goodwill” of her business). This makes

trademarks a valuable form of property. One recent

study put the value of the median trademark at over $20

million. Pranav Desai et al., The Value of Trademarks 2

(2025). The decision below invites government to act like

an unaccountable rival to businesses and nonprofits by

appropriating valuable trademarks because it can do so

without triggering a categorical duty to compensate the

trademark owner.

The technical availability of a Penn Central claim

provides little comfort to trademark owners. The Ninth

Circuit has “observed that diminution in property value

because of governmental regulation ranging from 75%

to 92.5% does not constitute a taking.” Colony Cove

Properties, LLC v. City of Carson, 888 F.3d 445, 451 (9th

Cir. 2018). The Federal Circuit is “aware of no case in

which a court has found a taking where diminution in value

was less than 50 percent.” CCA Assocs. v. United States,

667 F.3d 1239, 1246 (Fed. Cir. 2011) (citation omitted).

Under the Penn Central test, trademark holders could lose

millions in value and not receive a penny in compensation.

The issue is cleanly presented. The panel below was

squarely confronted with the claim that Puerto Rico’s

appropriation of the Clemente trademark constituted a

per se taking. App. 57a–58a. The Clementes argued that

there was no need for the panel to resort to a multi-factor

balancing test because Puerto Rico appropriated the

Roberto Clemente trademark for itself and destroyed the

Clementes’ right to exclude. App. 57a. The panel agreed

that the Takings Clause protects intangible property.

App. 63a. As the panel saw it, however, this Court’s per

se takings cases concern the “unique nature of a property

owner’s rights over physical property and of any physical

possession or intrusion onto such property, which ousts the

property owner of their rights in a way that infringement

of intangible property does not.” App. 58a. The panel thus

affirmed the district court’s dismissal of the takings claim

solely because it disagreed with Petitioners on the issue

presented.

This case involves the most egregious form of

trademark theft. Puerto Rico appropriated the trademark

pursuant to laws it enacted and sold the trademark for 15

million dollars over the course of a year. Thus, to the extent

that there’s any difference, Puerto Rico’s misconduct was

not an “isolated instance[] of infringement” but instead

systematic “infringement that prevented the trademark

owner from exercising their right to exclude.” App. 62a

n.32.

That right is particularly important for trademark

holders. “If the law will not protect one’s claim of right to

exclude others from using an alleged trademark, then he

does not own a ‘trademark,’ for that which all are free to use

cannot be a trademark.” In re Deister Concentrator Co.,

289 F.2d 496, 501 n.5 (C.C.P.A. 1961). This is particularly

true here because this case involves the trademark of

an international sports and humanitarian hero: Roberto

Clemente. The “connection between a trademark and

reputation is even stronger when the mark contains a

person’s name.” Vidal, 602 U.S. at 1521–22.

That this case involves a trademark also makes it a

superior vehicle because trademarks, unlike copyrights

and patents, are property rights exclusively based on the

laws of the states and common law. In re Trade-Mark

Cases, 100 U.S. 82, 93–94 (1879). Trademarks share even

more of the features of traditional property rights because

they flow from the goodwill inherent in brand names and

services engaged in market competition. See id. at 94. And

trademarks, unlike copyrights and patents, may provide

perpetual rights in the mark. Qualitex Co. v. Jacobson

Products Co., Inc., 514 U.S. 159, 165 (1995).

There are no procedural hurdles that impede this

Court’s review. Although the panel declined to consider

whether sovereign immunity could bar a self-executing

takings claim, it held that Respondents waived their

qualified immunity defense by failing to properly assert

it below. App. 86a; see also App. 86a & n.45 (“[T]he

only argument made regarding the takings claim in

[Respondents’] initial motion [to dismiss] was that it was

barred by sovereign immunity.”).6 Thus, regardless of

whether this Court grants review to determine whether

sovereign immunity shields Respondents from liability in

their official capacities, the parties will litigate the claims

6. To be sure, the panel states that it does not reach qualified

immunity with respect to the takings claim, App. 64a, but its

reasoning would doubtless lead to the same conclusion that

Respondents failed to preserve any qualified immunity defense

to the takings claim.

against Respondents in their individual capacities. This

Court should grant review so that Petitioners can press

their takings claim alongside their statutory claims on

remand.

II. Sovereign Immunity Does Not Bar the Clementes’

Claims

Puerto Rico is Not Entitled to Sovereign

Immunity

1. As Justice Thomas recently observed, “it is

difficult to see how the same inherent sovereign immunity

that the States enjoy in federal court would apply to

Puerto Rico.” Fin. Oversight & Mgmt. Bd. for Puerto Rico

v. Centro de Periodismo Investigativo, Inc., 598 U.S. 339,

354 (2023) (Thomas, J., dissenting).7 Sovereign immunity

“is a fundamental aspect of the sovereignty which the

States enjoyed before the ratification of the Constitution.”

Alden v. Maine, 527 U.S. 706, 713 (1999). Because States

“entered the Union with their sovereign immunity intact,”

federal courts may not entertain a person’s suit against

a state “absent waiver or valid abrogation.” Virginia Off.

for Prot. & Advoc. v. Stewart, 563 U.S. 247, 253–54 (2011).

7. Since “the plain text of the Eleventh Amendment applies

only to lawsuits brought against a State by citizens of another

State,” Justice Thomas has assumed the First Circuit meant

the “sovereign immunity that is inherent in the 50 States” when

referring to “Eleventh Amendment immunity.” Fin. Oversight

& Mgmt. Bd. for Puerto Rico, 598 U.S. at 353–54 (Thomas, J.,

dissenting); see also App. 65a–66a n.34 (using sovereign immunity

and Eleventh Amendment immunity to refer to the immunity that

states enjoy).

Puerto Rico is different. Because Puerto Rico joined

the United States as a territory, Commonwealth of Puerto

Rico v. Sanchez Valle, 579 U.S. 59, 63 (2016), it did not

obtain sovereign immunity by being “admi[tted] into the

Union upon an equal footing with the other States.” Alden,

527 U.S. at 713. Territories “are not sovereigns distinct

from the United States.” Sanchez Valle, 579 U.S. at 71

(citation omitted). They are subject to the plenary power

of Congress. 8 See D.C. v. Carter, 409 U.S. 418, 430 (1973);

see also Art. IV, § 3, cl. 2 (allowing Congress to “make all

needful Rules and Regulations respecting the Territory

. . . belonging to the United States.”).

2. The First Circuit has never articulated any

persuasive reason why Puerto Rico is entitled to the same

sovereign immunity as the states. Its earlier decisions

concluding that Puerto Rico has sovereign immunity

offer little reasoning. In Ezratty v. Com. of Puerto

Rico, the First Circuit concluded, without explanation,

that “principles of the Eleventh Amendment” are “fully

applicable to the Commonwealth of Puerto Rico.” 648 F.2d

770, 776 n.7 (1st Cir. 1981). A district court case cited by the

First Circuit posits that Puerto Rico had immunity from

suit before the creation of the Commonwealth. Ursulich

v. Puerto Rico Nat. Guard, 384 F. Supp. 736, 737 (D.P.R.

8. The United States manages Puerto Rico’s affairs in

ways that would be unimaginable if Puerto Rico were a state.

Congress set up a system “for overseeing Puerto Rico’s finances,”

and a board that “approves and enforces the Commonwealth’s

fiscal plans and budgets, and supervises the Commonwealth’s

borrowing.” Fin. Oversight & Mgmt. Bd., 598 U.S. at 342–43.

The Act requires Puerto Rico to send the Board the text of each

new law and allows the Board to prevent the enforcement of laws

significantly inconsistent with its fiscal plan. 48 U.S.C. § 2144(a).

1974). But the cases the court relies on only support a

lesser, common law immunity. In People of Porto Rico

v. Rosaly y Castillo, for example, this Court concluded

that Puerto Rico was immune from a lawsuit concerning

Puerto Rico law and in a Puerto Rico court. 227 U.S.

270, 273 (1913). But the case said nothing about whether

Puerto Rico had sovereign immunity inherent in state

sovereignty. Cf. Fin. Oversight & Mgmt. Bd. for Puerto

Rico, 598 U.S. at 346 (reserving the question).

Justice Brennan understood the difference. Dissenting

from a holding that territories are not “person[s]” under

42 U.S.C. § 1983, he explained that Rosaly stood for

the proposition that territories “may retain commonlaw sovereign immunity against claims raised in [their]

own courts under [their] own local laws.” Ngiraingas v.

Sanchez, 495 U.S. 182, 205 (1990) (Brennan, J., dissenting)

(emphasis in original). But territories cannot rely on

immunity to shield them from “a suit in federal court

based on federal law.” Id.

In the alternative, Puerto Rico enjoys common law

immunity. Cf. Michigan v. Bay Mills Indian Cmty., 572

U.S. 782, 788 (2014) (describing tribal immunity as a

“common-law immunity from suit traditionally enjoyed

by sovereign powers” as “a necessary corollary to Indian

sovereignty and self-governance”) (citations omitted).

That common law immunity, which Puerto Rico would be

able to assert in federal court, credits the Commonwealth’s

“power of local self-determination.” Ursulich, 384 F. Supp.

at 737. But it also recognizes Congress’s plenary power

over territories, see Art. IV, § 3, cl. 2, and allows Congress

to abrogate that immunity with a clear statement of

abrogation. Cf. Lac du Flambeau Band of Lake Superior

Chippewa Indians v. Coughlin, 599 U.S. 382, 387–88

(2023) (applying clear statement rule in tribal immunity

case).9

B. If Puerto Rico has Some Form of Immunity in

Federal Court, the Lanham Act Abrogates It

Even if Puerto Rico had common law immunity from

suit in federal court, the Lanham Act provides a clear

statement of Congressional intent to abrogate it. That

conclusion holds regardless of whether Congress did so in

Section 1122(a), which covers the United States, or Section

1122(b), which covers the states.

1. Section 1122(a) abrogates Puerto Rico’s immunity.

The statute provides that the United States, which the

Lanham Act elsewhere defines as including “all territory

which is under its jurisdiction and control,” 15 U.S.C. § 1127,

“shall not be immune from suit in Federal or State court”

for violations of the Lanham Act. That language makes

congressional intent to abrogate immunity “unmistakably

clear,” Lac du Flambeau, 599 U.S. at 387, and resembles

language that, as this Court noted, “could not have

been any clearer” in expressing “Congress’s intent to

abrogate.” Fla. Prepaid Postsecondary Educ. Expense

Bd. v. Coll. Sav. Bank, 527 U.S. 627, 635 (1999) (evaluating

9. A ll agree that government can’t rely on sovereign

immunity to prevent individuals from seeking prospective relief

against government officials in their official capacity. See Ex

Parte Young, 209 U.S. 123 (1908). The panel’s dismissal of the

Clementes’ claim for prospective relief rested on a theory of waiver

that overlooked the arguments that the Clementes made below.

See Pltfs’ Opposition at 19–20, Clemente Props., Inc. v. Pierluisi

Urrutia, ECF No. 45, No. 22-1373 (D.P.R. Feb. 24, 2023).

the language: “Any State . . . shall not be immune, under

the eleventh amendment of the Constitution of the United

States or under any other doctrine of sovereign immunity,

from suit in Federal court”). Thus, federal courts hear

Lanham Act cases against the United States. See, e.g.,

Trusted Integration, Inc. v. U.S., 679 F.Supp.2d 70, 78–79

(D.D.C. 2010).

The panel below ag reed that Section 1122(a)

unequivocally waives the United States’s immunity,

App. 79a, but concluded that it did not clearly abrogate

Puerto Rico’s immunity merely because “territory” was

“open to multiple interpretations.” App. 79a. The panel’s

conclusion contravened this Court’s instruction that the

clear-statement “rule is not a magic-words requirement”

and “Congress need not state its intent in any particular

way.” See Lac du Flambeau, 599 U.S. at 388 (citation

omitted). In Lac du Flambeau, for example, this Court

held that the Bankruptcy Code unequivocally abrogates

tribal immunity by abrogating the sovereign immunity of

“governmental unit[s].” 599 U.S. at 387–92. In so doing,

this Court did not take the clear statement rule to require

it to credit every possible interpretation of “government”

that did not include tribes. See id. at 392–93. Rather,

it looked to how Congress and the Court ordinarily

characterized tribes. Id.

The panel’s analysis was inconsistent with this

approach. The language in Section 1127 mirrors Chief

Justice Marshall’s description of the territories as

being “within the power and jurisdiction of the United

States.” Am. Ins. Co. v. 356 Bales of Cotton, 26 U.S. 511,

542–43 (1828). It makes no difference that Section 1127

puts “territory” in the singular. But see App. 80a. The

Constitution itself allows Congress to “dispose of and

make all needful Rules and Regulations respecting the

Territory . . . belonging to the United States.” Art. IV,

§ 3, cl. 2 (emphasis added). Under an ordinary reading of

Section 1127, “‘The United States includes and embraces

all territory which is under its jurisdiction and control,’

including the Commonwealth of Puerto Rico.” Windmar

PV Energy, Inc. v. Solar Now Puerto Rico, LLC, No. CV

24-1570 (RAM), 2025 WL 725078, at *10 n.2 (D.P.R. Mar.

6, 2025).

The decision below asserted that Puerto Rico’s status

has changed “from that of a mere territory to the unique

status of Commonwealth.” App. 79a–80a. But this Court

continues to describe Puerto Rico as a territory. See

United States v. Vaello Madero, 596 U.S. 159, 162 (2022)

(“Congress sometimes legislates differently with respect

to the Territories, including Puerto Rico, than it does

with respect to the States.”). As this Court explained,

Congress approved the Puerto Rico Constitution to

“enable a territory’s people to make large-scale choices

about their own political institutions.” Sanchez Valle, 579

U.S. at 65, 77. But Congress did not fundamentally change

Puerto Rico’s status.

The First Circuit’s reliance on its precedent in Jusino

Mercado v. Commonwealth of Puerto Rico, 214 F.3d 34,

42 (1st Cir. 2000), is also misplaced. Jusino Mercado

evaluated a provision of the Fair Labor Standards Act

that expressly defined “State” to include “any Territory

or possession of the United States.” 29 U.S.C. § 203(c). By

contrast, the Lanham Act does not mention “territory”

in its definition of states, 15 U.S.C. § 1122(b), but in its

definition of the United States. 15 U.S.C. § 1127. In all,

to the extent that Puerto Rico has immunity from suit in

federal court, Section 1122(a) provides a clear statement

of Congress’s intent to abrogate it.

2. Even if the panel was correct that Section

1122(b) encompasses Puerto Rico, that provision should

have abrogated Puerto Rico’s immunity. All agree that

Section 1122(b), which provides that states “shall not be

immune” from suit in federal court, reflects Congress’s

“unmistakable intent to abrogate state sovereign immunity

for Lanham Act claims.” App. 70a (citation omitted). The

panel took a wrong turn, however, when it then required

the Clementes to establish a proper abrogation of state

sovereign immunity under Section 5 of the Fourteenth

Amendment. App. 72a. Because the Territory Clause gives

Congress plenary power over territories, see Art. IV, § 3,

cl. 2, Congress is not limited to its power to “enforce” the

Fourteenth Amendment when it attempts to abrogate

Puerto Rico’s immunity. Allen v. Cooper, 589 U.S. 248,

260 (2020). Thus, if Section 1122(b) applies to Puerto

Rico, it also abrogates its immunity by providing a clear

statement of Congress’s intent to do so.

This Case Presents an Excellent Vehicle to

Address an Issue of Vast Importance

This case presents an excellent vehicle to determine

whether Puerto Rico is immune from suit in federal court.

Unlike Fin. Oversight & Mgmt. Bd. for Puerto Rico v.

Centro de Periodismo Investigativo, Inc., in which the

Court “agreed to tackle only the abrogation question,” the

Court can grant certiorari to explicitly decide this issue.

598 U.S. 339, 346 n.2 (2023). As the panel acknowledged,

the Clementes explicitly preserved this question for

review, App. 67a n.35, and the question is presented here

directly. Moreover, unlike Fin. Oversight & Mgmt. Bd.

for Puerto Rico, which was “a singularly inapt vehicle to

resolve Puerto Rico’s immunity” because Puerto Rico did

not play a role in that case, Puerto Rico will play a central

role here because it and its officials are parties to the suit.

598 U.S. at 346 n.2.

The extent of Puerto Rico’s immunity is extremely

important. For decades, the First Circuit has vested Puerto

Rico with state sovereign immunity without providing a

compelling reason for doing so. The court’s holdings are

not just misguided in theory, but harmful in practice. In re

San Juan Dupont Plaza Hotel Fire Litigation concerned

a fire in a hotel in Puerto Rico that resulted in 96 deaths,

other severe injuries, and property damage. 888 F.2d

940, 941 (1st Cir. 1989). Thousands of plaintiffs had their

claims against the Tourism Company of Puerto Rico

dismissed because the First Circuit determined it was an

arm of Puerto Rico. Id. at 940–41, 943 (1st Cir. 1989). In

Maysonet-Robles v. Cabrero, homeowners and low-income

housing tenants saw their claims based on the presence

of asbestos and lead within units dismissed on sovereign

immunity grounds. 323 F.3d 43, 46–47 (1st Cir. 2003).

According to the court, “the actions of the Puerto Rico

executive agencies and legislature here have continued

a distressing pattern of activity in seeking to avoid

millions of dollars of established or potential liability.” Id.

at 54. Puerto Rico’s reliance on “Eleventh Amendment

immunity” to escape accountability continues. See, e.g.,

Miya Water Projects Netherlands B.V. v. Fin. Oversight

& Mgmt. Bd. for Puerto Rico, 138 F.4th 49, 51–52, 54, 56

(1st Cir. 2025) (suit barred by immunity after Financial

Oversight and Management Board for Puerto Rico refused

to provide records about a cancelled water infrastructure

project).

Puerto Ricans deserve better. Citizens in 50 states

know the rules that, for better or worse, dictate the

remedies they can obtain against their state governments

in federal court. Puerto Ricans, however, do not have

clarity on this important issue—which affects the entire

political and legal system of the Commonwealth. This

Court’s intervention is thus needed to provide them with

the certainty that those who live in the 50 states already

enjoy. The decision below, predicated on an indefensible

view of Puerto Rico’s immunity from suit, defies both

constitutional structure and congressional intent. This

Court should correct this decades-long folly.

CONCLUSION

The petition for a writ of certiorari should be granted.

June 2026

Respectfully submitted,

Tanaira Padilla-Rodriguez

Wencong Fa

Avenue Ponce de León 1225

Counsel of Record

VIG Tower, Suite 1500

Ben Stormes

San Juan, PR 00907

Travis Woods

(787) 620-0527

Beacon Center of Tennessee

tanairapadilla@yahoo.com

54 Music Square East,

Suite 125

Nashville, TN 37203

(615) 383-6431

wen@beacontn.org

Counsel for Petitioners

APPENDIX

TABLE OF APPENDICES

Page

A P P E N DI X A — O P I N ION O F T H E

UNITED STATES COURT OF

A PPEALS FOR THE FIRST CIRCUIT,

FILED JANUARY 16, 2026 . . . . . . . . . . . . . . . . . . . 1a

A P P E N DI X B — O P I N ION O F T H E

UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF PUERTO RICO,

FILED SEPTEMBER 22, 2023 . . . . . . . . . . . . . . . 95a

A PPENDI X C — J U DGMENT OF THE

UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF PUERTO RICO,

FILED SEPTEMBER 22, 2023 . . . . . . . . . . . . . . 162a

A PPEN DI X D — OR DER OF T H E

UNITED STATES COURT OF

A PPEALS FOR THE FIRST CIRCUIT,

ENTERED FEBRUARY 25, 2026 . . . . . . . . . . . . 164a

Appendix

APPENDIX A — OPINION

OF THE

UNITED STATES

COURT OF APPEALS FOR THE FIRST CIRCUIT,

FILED JANUARY 16, 2026

UNITED STATES COURT OF APPEALS

FOR THE FIRST CIRCUIT

No. 23-1922

CLEMENTE PROPERTIES, INC.; 21 IN RIGHT,

INC.; ROBERTO CLEMENTE, JR.; LUIS ROBERTO

CLEMENTE; ROBERTO ENRIQUE CLEMENTE,

Plaintiffs, Appellants,

HON. PEDRO R. PIERLUISI-URRUTIA,

GOVERNOR OF PUERTO RICO, IN HIS OFFICIAL

AND INDIVIDUAL CAPACITY AND AS

REPRESENTATIVE OF THE COMMONWEALTH

OF PUERTO RICO; EILEEN M. VÉLEZ-VEGA,

SECRETARY OF THE DEPARTMENT OF

TRANSPORTATION AND PUBLIC WORKS, IN

HER OFFICIAL AND INDIVIDUAL CAPACITY;

FRANCISCO PARÉS ALICEA, SECRETARY

OF THE DEPARTMENT OF THE TREASURY, IN

HIS OFFICIAL AND INDIVIDUAL CAPACITY;

RAY J. QUINOÑES-VÁZQUEZ, SECRETARY

OF THE DEPARTMENT OF SPORTS AND

RECREATION, IN HIS OFFICIAL AND

INDIVIDUAL CAPACITY; PUERTO RICO

CONVENTION CENTER DISTRICT AUTHORITY,

Defendants, Appellees,

Appendix A

JOHN DOE; CONJUGAL PARTNERSHIP

DOE-VÉLEZ; JANE DOE; CONJUGAL

PARTNERSHIP QUIÑONES-DOE,

Defendants.

APPEAL FROM THE

UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF PUERTO RICO

[Hon. Gina R. Méndez-Miró, U.S. District Judge]

Before

Barron, Chief Judge,

Lipez and Thompson, Circuit Judges.

Filed January 16, 2026

THOMPSON, Circuit Judge. The sons of a famous

P uer to Rico baseball player, Rober to Clemente

(“Clemente”), together with two corporations under their

control, have sued the Commonwealth of Puerto Rico (the

“Commonwealth”) and several related defendants over

the use of Clemente’s name and image on commemorative

license plates and registration tags. The proceeds from

those commemorative items were set aside to fund a

“sports district” that will bear Clemente’s name but

will replace a similar initiative originally conceived by

Clemente and his wife. Clemente’s sons call themselves

the “ultimate representatives and protectors of his

legacy.” The problem is that the laws they invoke in this

Appendix A

case – the Lanham Act and the Constitution’s Takings

Clause – are designed not to protect legacies but instead

to remedy unfair competition, consumer confusion,

and the taking of property for public use without just

compensation. Moreover, because the opposing parties

include the Commonwealth and its officials, Clemente’s

heirs, in their quest to vindicate their father’s name, face

an obstacle course of doctrinal immunities designed to

protect governments and officials from lawsuits.

The district court ruled that the Clementes struck

out on all claims and against all defendants when it

granted two motions to dismiss. The Clementes, now

appellants, want us to overturn several calls from the

game below. After a careful review, we think the district

court’s grounds for dismissal of some of the claims against

Commonwealth officials were off base. We thus vacate

dismissal of appellants’ claims under certain provisions

of the Lanham Act, 15 U.S.C. §§ 1114(1), 1125(a)(1)(A) and

1125(c), against the individual officials in their personal

capacities, and remand for further proceedings, but

otherwise affirm dismissal of their claims.

THE PRE-GAME REPORT (HOW WE GOT HERE)

Roberto Clemente’s Legacy

Because this case arises from the grant of a Rule 12(b)

(6) motion, we present the facts as alleged in the operative

complaint. Aresty Int’l L. Firm, P.C. v. Citibank, N.A.,

677 F.3d 54, 56 (1st Cir. 2012). Clemente, nicknamed “The

Great One” by his fans, was (as we’ve just said) a famous

Appendix A

Puerto Rico baseball player who played for the Pittsburgh

Pirates wearing jersey number 21. Over the course of his

successful career, he accumulated 3,000 regular-season

hits, a feat achieved by only 33 players in the history of

Major League Baseball. In addition to being an athlete,

Clemente was also a champion of humanitarian causes. He

died in a plane crash in 1972 while en route to Nicaragua

to deliver aid to earthquake victims. Since his death, his

widow (who passed in 2020) and his three sons (Roberto

Clemente Junior, Luis Roberto Clemente, and Roberto

Enrique Clemente) have tried to protect his legacy and

support the causes that Clemente believed in.

Appellants in the present litigation comprise

Clemente’s sons and two corporations they control:

Clemente Properties, Inc. and 21 In Right, Inc. Clemente

Properties registered the trademark “Roberto Clemente”

with the United States Patent and Trademark Office

(“USPTO,” for short). See ROBERTO CLEMENTE,

Registration No. 5,176,650. And 21 In Right, according

to the complaint, “is the corporation with the right to

license the Roberto Clemente trademark.” 21 In Right

licenses the mark for use by “select companies for high

quality merchandise and endorsements” and appellants

(through management agency CMG Worldwide Inc.) police

any unauthorized uses.

The Clemente family has allowed various organizations

to operate under the name “Roberto Clemente,” including

the Roberto Clemente Foundation. Particularly relevant

to this litigation is Ciudad Deportiva Roberto Clemente

Inc. (“Ciudad Deportiva”). Ciudad Deportiva operates a

Appendix A

youth sports facility (of the same name) on land donated

by the Commonwealth. It appears that, at the time of the

key events leading to this lawsuit, Ciudad Deportiva was

in such need of repair and further development that it

could not be opened to the public. The complaint blames

problems with the maintenance of Ciudad Deportiva

on the cessation of government funding and on “the

public officials that sit in Cuidad [sic] Deportiva’s board

of directors” who blocked a “work plan to achieve the

reopening of the facilities with private investment.” We

note that we cannot tell from the face of the complaint what

involvement appellants have, if any, in Ciudad Deportiva,

and Ciudad Deportiva is not a party to this litigation.

The complaint emphasizes only that Clemente founded

Ciudad Deportiva and that Ciudad Deportiva “is one of

the most valuable and recognizable endeavors backed by

the Roberto Clemente mark.”

The Alleged Unauthorized Use

The events leading to the present dispute occurred in

2021 and 2022. Sometime before the events we’re about to

recount (the complaint doesn’t specify when), appellants

authorized Ciudad Deportiva “to use the trademark, name

and likeness of Roberto Clemente” on vehicle license

plates. Ciudad Deportiva planned to raise funds by issuing

commemorative license plates to members of the public for

a voluntary donation of $2.10. In February 2021, a letter

(the complaint doesn’t say from whom) informed Puerto

Rico Governor Pedro R. Pierluisi-Urrutia (“Governor

Pierluisi”) of this plan.

Appendix A

As early as March 2021, two pieces of legislation

were proposed in the Puerto Rico Legislature, which

were eventually enacted as Joint Resolutions Nos. 16

and 17 on August 5, 2021. In final form, Joint Resolution

No. 16 required any driver who acquired a new Puerto

Rico license plate in calendar year 2022 to purchase a

special plate commemorating the 50th anniversary of

Roberto Clemente’s 3,000th hit. Drivers were charged an

additional $21 (apparently over and above the usual fees)

for this plate. Any member of the public who did not need to

acquire a new license plate could also pay $21 to exchange

their existing license plate for the Roberto Clemente

commemorative plate. According to the complaint,

Secretary of Transportation and Public Works Eileen

M. Vélez-Vega (“Secretary Vélez” or “Transportation

Secretary”) promoted Joint Resolution No. 16 and

particularly advocated for making the purchase of the

commemorative plate mandatory for any individual who

acquired a new plate in 2022. Joint Resolution 17 added

a mandatory $5 surcharge to registration tags issued in

calendar year 2022 in return for a tag that commemorated

the same 50-year anniversary of Clemente’s 3,000th hit.

The commemorative plate and tag included the following

visual elements: an image of Roberto Clemente; the words

“Clemente,” “anniversary,” and “3000 hits”; and the

numbers “21” and “50.” The money collected from Joint

Resolutions Nos. 16 and 17 was to be placed in something

called “the Roberto Clemente Sports District Fund.” The

Joint Resolutions stated that the Roberto Clemente Sports

District Fund would be administered by the Department

of the Treasury for the exclusive use of the Department

Appendix A

of Sports and Recreation.1 When paying for registration

tags, drivers were also presented the opportunity to make

a donation to the Roberto Clemente Sports District Fund.

The day before Governor Pierluisi signed Joint

Resolutions Nos. 16 and 17 into law, the Governor’s office

notified one of Roberto Clemente’s sons, Luis Roberto,

of the pending legislation. In response, Luis Roberto

emailed the Governor’s Assistant Chief of Staff to inform

him that “the name Roberto Clemente and its image

was a registered trademark and its use required prior

authorization” and that the Clemente family had not been

asked “for approval” of the Commonwealth’s planned use.

Luis Roberto also attached the February 2021 letter

regarding the planned license plates to be issued by

Ciudad Deportiva. The Governor nonetheless signed the

two Joint Resolutions into law.

Puerto Rico’s citizenry reacted negatively to the

new commemorative license plates and registration tags,

and the public believed that appellants were receiving

some financial benefit for the charges associated with

the commemorative items. The complaint claims that

1. Throughout this opinion, we rely on the complaint’s

allegations for the substance of the challenged legislation.

Appellants’ addendum includes certified translations of Joint

Resolutions Nos. 16 and 17, as well as Law 67-2022 (which

we’ll introduce in a moment). But because it appears that such

translations were not provided to the district court and thus were

not part of the record below, we do not consider the translations

here. See United States v. Guadalupe-Rivera, 501 F.3d 17, 21 n.4

(1st Cir. 2007).

Appendix A

this confusion was exacerbated by a couple of additional

statements. First, the Transportation Secretary made

a televised statement, in January 2022, that the funds

collected for commemorative plates and tags would

go to “the Roberto Clemente Foundation.” She also

“responded in the affirmative when inquired if the

charge to restauration [sic] of Ciudad Deportiva Roberto

Clemente was mandatory.” In addition, “the document

of permit for motor vehicles” (a license issued by the

Department of Transportation and Public Works) lists

the $5 surcharge for vehicle registration tags next to

the words “Roberto Clemente Fund.” To combat this

confusion, Luis Roberto communicated with the public

and with the Commonwealth’s government about “the

ownership of the trademark, the misappropriation and

the unauthorized use.”

A few months later, the Commonwealth enacted

Law 67-2022. As described in the complaint, Law 672022 transferred Ciudad Deportiva’s land back to the

Commonwealth for the purpose of building the “Roberto

Clemente Sports District” (the “Sports District”).

The Sports District was envisioned “as a sports and

recreational facility for the enjoyment of Puerto Ricans

and sports tourism.” The law delegated the responsibility

for development of the Sports District among several

entities. For instance, the Department of Sports and

Recreation was given authority over leasing, sub-leasing,

and using the Roberto Clemente Sports District Fund

(or just the “Fund”) “for everything related to the

operation, administration and conservation of the Roberto

Clemente Sports District.” The Puerto Rico Convention

Appendix A

District Authority (the “Authority”) was put in charge of

“planning and organization,” including “the development,

reconstruction and construction of facilities for its proper

functioning.” The law further provided that the Authority

would be able to enter into agreements “as it deems

necessary to induce third parties to develop” the Sports

District. To carry out these responsibilities, the Authority

would be allocated $150,000 from the Fund annually.

Appellants allege that Law 67-2022 communicates “some

kind of tacit endorsement of Roberto Clemente to this

project” by expressly referring to “his vision of building a

Sports City for the benefit of our young people and future

generations.” In appellants’ view, the Commonwealth is

using Clemente’s name and image “to destroy his dream

and his creation: Ciudad Deportiva,” and to replace it with

an “imitation.”

District Court Proceedings

Seeking relief, appellants sued the Commonwealth of

Puerto Rico, Governor Pierluisi, Transportation Secretary

Vélez, and the Authority in federal district court. They also

named as defendants Secretary of the Treasury Francisco

Parés-Alicea (presumably based on the Department of

the Treasury’s administration of the Roberto Clemente

Sports District Fund), and Secretary of the Department

of Sports and Recreation Ray J. Quinoñes-Vázquez (whom

allegedly endorsed Law 67-2022, was a member of the

Ciudad Deportiva Board of Directors, and was “directly

responsible for the creation of the Roberto Clemente

Sports District”).

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Appellants asserted several causes of action under

the Lanham Act; more specifically, they contended that

appellees’ use of Roberto Clemente’s name and image in

connection with the license plates, registration tags, and

Sports District amounted to trademark infringement,

false association, false advertising, and trademark

dilution. See 15 U.S.C. §§ 1114(1), 1125(a)(1)(A), 1125(a)

(1)(B), and 1125(c). Appellants also asserted that the

appellees’ use of the “Roberto Clemente trademark and

likeness” constitutes a taking without just compensation

in violation of the Fifth and Fourteenth Amendments. 2

Two motions to dismiss were filed below: one by the

Commonwealth and its officials (the “Commonwealth

Defendants”) and one by the Authority. Both argued

under Rule 12(b)(6) that the complaint failed to state a

claim upon which relief could be granted for a variety of

reasons. In relevant part, the Commonwealth Defendants’

motion invoked sovereign immunity and qualified

immunity defenses and challenged the Lanham Act claims

on the merits of whether “commercial advertising” was

sufficiently alleged. The Authority’s motion argued that

it was only minimally involved in the allegedly wrongful

conduct – that is, the complaint only alleged that the

Authority had certain statutory obligations under Law

67-2022 but not that the Authority performed any tasks

that would constitute a taking or a Lanham Act violation.

2. Appellants, in their own words, also asserted counts for

a Section 1983 cause of action, a due process claim, claims under

Puerto Rico’s trademark and right of publicity statutes, and a claim

for “unconstitutionality of statutes” under the federal and Puerto

Rico constitutions. None of these counts are at issue on appeal.

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The district court granted both motions to dismiss for

a number of overlapping reasons, which we’ll discuss in

detail as they become relevant to our analysis. For now,

it is enough to say the district court grounded dismissal

of the federal claims in sovereign immunity, qualified

immunity, and the failure to state a plausible claim on

the merits – and then declined to exercise subject matter

jurisdiction over the non-federal claims. See Clemente

Props., Inc. v. Pierluisi-Urrutia, 693 F. Supp. 3d 215

(D.P.R. 2023). Appellants appealed the dismissal of only

their Lanham Act and takings claims.

FIRST PITCH (SETTING THE TABLE)

We review the grant of a motion to dismiss for failure

to state a claim under Rule 12(b)(6) de novo, taking the

well-pleaded facts in the complaint as true and drawing all

reasonable inferences in favor of the plaintiffs. In re Fin.

Oversight & Mgmt. Bd. for P.R., 54 F.4th 42, 52 (1st Cir.

2022). “To survive a [Rule 12(b)(6)] motion to dismiss, a

complaint must contain sufficient factual matter, accepted

as true, to state a claim to relief that is plausible on its

face.” Id. (alteration in original) (quoting Ponsa-Rabell

v. Santander Sec. LLC, 35 F.4th 26, 32 (1st Cir. 2022)).

Defendants may raise affirmative defenses in a Rule 12(b)

(6) motion, as the Commonwealth Defendants did here,

“provided that the facts establishing the defense [are]

clear ‘on the face of the plaintiff’s pleadings.’”3 Zenon v.

3. We pause to note that we (and other courts) have sometimes

said that the appropriate pleading in which to raise a sovereign

immunity defense is a motion to dismiss under Rule 12(b)(1) for

lack of subject matter jurisdiction. See, e.g., Valentín v. Hosp.

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Guzman, 924 F.3d 611, 616 (1st Cir. 2019) (alteration in

original) (quoting Santana-Castro v. Toledo-Davila, 579

F.3d 109, 114 (1st Cir. 2009)); see also Haley v. City of Bos.,

657 F.3d 39, 47 (1st Cir. 2011) (recognizing that qualified

immunity “can be raised and evaluated on a motion to

dismiss”).

Because the Commonwealth Defendants and the

Authority write separately on appeal and the district

court analyzed the two motions to dismiss separately

below, we take the same approach in this opinion. To

that end, we first see how appellants stack up against the

Commonwealth Defendants and trot out the Authority

only when that’s finished. Let’s play ball.

AGAINST THE STARTING PITCHER

(CLAIMS AGAINST THE

COMMONWEALTH DEFENDANTS)

A s we prefaced in our opening remarks, the

Commonwealth Defendants ask us to affirm not only

because the district court correctly determined that the

merits of the Lanham Act claims were not plausibly pled

Bella Vista, 254 F.3d 358, 362–63 (1st Cir. 2001); Geomatrix, LLC

v. NSF Int’l, 82 F.4th 466, 478 (6th Cir. 2023). But see LeFrere

v. Quezada, 582 F.3d 1260, 1263 (11th Cir. 2009). Yet since the

Commonwealth Defendants’ assertion of sovereign immunity did

not quibble with the facts alleged in the complaint and poses only

“pure . . . questions of law,” we would conduct de novo review even

if the motion were styled under Rule 12(b)(1). Valentín, 254 F.3d

at 363. This discrepancy thus has no bearing on our standard of

review here.

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Appendix A

but also because two types of immunity (sovereign and

qualified) apply. While our circuit precedent recognizes

that sovereign immunity is jurisdictional in one sense, it

need not be resolved before other dispositive issues. See

Parella v. Ret. Bd. of R.I. Emps.’ Ret. Sys., 173 F.3d 46,

54–56 (1st Cir. 1999). In this case, even if we conclude

sovereign immunity applies, we’d still need to consider

the substance of the Lanham Act and takings claim. This

is because appellants sue the Commonwealth officials in

both their personal and official capacities, and sovereign

immunity provides no protection against personalcapacity suits.4 Lewis v. Clarke, 581 U.S. 155, 163, 137

S. Ct. 1285, 197 L. Ed. 2d 631 (2017); Haidak v. Univ. of

Mass.-Amherst, 933 F.3d 56, 76 (1st Cir. 2019). Moreover,

a qualified immunity analysis often requires assessing

the merits of the claim. See Pearson v. Callahan, 555

U.S. 223, 236, 129 S. Ct. 808, 172 L. Ed. 2d 565 (2009)

4. The Commonwealth Defendants claim that appellants “do

not clearly state whether they joined the government officials in

their official or individual capacit[ies].” This is flatly contradicted

by the allegations of the complaint, which seek damages from

“Defendants in their individual capacities.”

Below, the individual Commonwealth officials argued that

allegations regarding their personal involvement were not

sufficient to state a claim. The district court declined to take

a definitive position on this issue. See Clemente Props., 693 F.

Supp. 3d at 250. And the Commonwealth Defendants do not

squarely present the issue to us again on appeal. We thus treat

the Commonwealth Defendants as a collective group and make no

attempt to parse the liability of individual officials in this opinion.

Nothing we say today prevents the Commonwealth officials from

developing or raising arguments regarding their lack of individual

liability on remand.

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Appendix A

(explaining that it is “often beneficial” to start a qualified

immunity analysis by first determining whether “the

relevant facts . . . make out a constitutional violation at

all” but recognizing that judges may begin by considering

whether a right is “clearly established”). Thus we believe

the best approach in this case is to address the merits of

appellants’ Lanham Act and takings claims before moving

on to sovereign and qualified immunity.

Lanham Act

The bulk of appellants’ claims arise from the

Lanham Act, a federal statute that protects against a

variety of conduct, including trademark infringement,

false advertising, and trademark dilution. See 15 U.S.C.

§ 1127 (describing the intent of the Lanham Act). Before

proceeding any further in our discussion, we feel obliged

to recognize that Lanham Act caselaw is filled with jargon,

and there are often multiple names to describe the same

or similar concepts. The parties’ briefs and the district

court’s opinion sometimes play fast and loose with this

terminology. For the sake of both laypersons and legal

professionals, we offer a brief primer to make sure that

everyone is looking at the same scoreboard.

As an initial matter, when discussing Lanham Act

provisions, courts often cite to the section numbering of

legislation as enacted, see Trademark (Lanham) Act of

1946, Pub. L. No. 79-489, Stat. 427, rather than sections

of the United States Code. For example, references

to “Lanham Act Section 32” correspond to 15 U.S.C.

§ 1114 (“Section 1114”) while references to “Section

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Appendix A

43” correspond to 15 U.S.C § 1125 (“Section 1125”). See

Venture Tape Corp. v. McGills Glass Warehouse, 540 F.3d

56, 59 & nn.1–2 (1st Cir. 2008). This opinion will stick to

the codified version of the statute (i.e., Section 1114) for

clarity.

The Lanham Act, among its other functions, “provides

federal statutory protection for trademarks.” U.S. Pat. &

Trademark Off. v. Booking.com B.V., 591 U.S. 549, 552, 140

S. Ct. 2298, 207 L. Ed. 2d 738 (2020). A trademark consists

of a word, phrase, image, or other device that identifies

goods or services as originating from a particular source.

See Judson Dunaway Corp. v. Hygienic Prods. Co., 178

F.2d 461, 464 (1st Cir. 1949) (describing trademarks as

“symbols or devices [serving] as identifying marks for

goods” and contemplating both word and picture marks);

I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 51–52

(1st Cir. 1998) (Boudin, J., concurring) (explaining that

trademarks can take the form of names, logos, or even

ornamental designs of a product or its packaging, which

signal the source of a good or service). The Lanham Act

provides causes of action for infringement of a registered

mark under 15 U.S.C. § 1114(1) (again, “Section 1114”)

and infringement of an unregistered mark under 15

U.S.C. § 1125(a)(1)(A) (again, “Section 1125”)). B & B

Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 144,

135 S. Ct. 1293, 191 L. Ed. 2d 222 (2015); see Borinquen

Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 117

(1st Cir. 2006). As this statutory scheme suggests, a

plaintiff can have rights in a trademark even if it is never

registered, though registration does provide certain

litigation advantages. See Borinquen Biscuit, 443 F.3d at

16a

Appendix A

117. Rights in a trademark “accrue” when someone uses

a mark “in connection with a particular line of business”;

they “do not arise out of registration.” Volkswagenwerk

Aktiengesellschaft v. Wheeler, 814 F.2d 812, 819 (1st Cir.

1987).

Whether the mark is registered or unregistered, the

“touchstone” of a trademark infringement case is that

the defendant’s use of the same or similar mark is likely

to confuse consumers as to the source of the product or

service. Dorpan, S.L. v. Hotel Meliá, Inc., 728 F.3d 55, 61

(1st Cir. 2013). For famous trademarks, as appellants say

they have here, the Lanham Act provides an additional

layer of protection even absent any likelihood of confusion.

See 15 U.S.C. § 1125(c); Jack Daniel’s Props., Inc. v. VIP

Prods. LLC, 599 U.S. 140, 147, 143 S. Ct. 1578, 216 L. Ed.

2d 161 (2023). The owner of a famous mark can sue for

injunctive relief when someone else uses the mark in a

manner that impairs the mark’s distinctiveness (dilution

by blurring) or its reputation (dilution by tarnishment).

See 15 U.S.C. § 1125(c)(1), (c)(2)(B)-(C).

The Lanham Act also prohibits certain methods of

unfair competition even when no trademark is involved.

Section 1125(a)(1)(A) – which we described above as a

vehicle for asserting infringement of an unregistered

trademark – can be invoked even when a plaintiff claims

protection for something without “all the traditional

indicia of a ‘trademark.’” 4 McCarthy on Trademarks

and Unfair Competition § 28:15 (5th ed. 2025) (discussing

false endorsement claims under Section 1125(a)(1)(A)). As

will be relevant here, several of our sister circuits have

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Appendix A

recognized what some call a “false endorsement” claim

under Section 1125(a)(1)(A), wherein a person’s identity

or persona substitutes for the trademark. See, e.g., Souza

v. Exotic Island Enters., 68 F.4th 99, 112 (2d Cir. 2023)

(noting that “in a false endorsement case . . . the mark

in question is the identity of the purported endorser

herself” (cleaned up)); White v. Samsung Elecs. Am.,

Inc., 971 F.2d 1395, 1400 (9th Cir. 1992) (explaining that

in false endorsement cases, “‘mark’ means the celebrity’s

persona”), as amended (Aug. 19, 1992). Though Section

1125(a)(1)(A) is still frequently referred to as a “trademark

infringement” provision, courts sometimes account for

the broader nature of the provision by using a more

general term like “false association.” See, e.g., Am. Bd.

of Internal Med. v. Salas Rushford, 114 F.4th 42, 64 (1st

Cir. 2024) (analyzing a “false association” claim under

Section 1125(a)(1)(A)). For a claim under Section 1125(a)

(1)(A), the text of the statute itself requires the plaintiff

to show a likelihood of confusion. 15 U.S.C. § 1125(a)(1)(A).

Separately, under Section 1125(a)(1)(B), a plaintiff can,

speaking at a high level, sue for false advertising if the

defendant makes “a false or misleading description of fact

or representation of fact in a commercial advertisement

about his own or another’s product.” Cashmere & Camel

Hair Mfrs. Inst. v. Saks Fifth Ave., 284 F.3d 302, 310–11

(1st Cir. 2002) (identifying elements of false advertising

claim); see 15 U.S.C. § 1125(a)(1)(B). False advertising

claims are limited to acts “in commercial advertising

or promotion.” 15 U.S.C. § 1125(a)(1)(B). And unlike a

false association claim, a false advertising claim does not

necessarily require proof of confusion. See Cashmere, 284

18a

Appendix A

F.3d at 311 (“Where the advertisement is literally false, a

violation may be established without evidence of consumer

deception.”).

The list of Section 1125(a) nomenclature doesn’t

end there, but this covers most of what will be relevant

here. 5 We read the parties’ briefs and the district court’s

opinion with these overlapping monikers in mind. For

clarity, our discussion cites the codified sections (and

subsections) of the Lanham Act. We sometimes use the

term “false association” to identify claims brought under

Section 1125(a)(1)(A), as opposed to “false advertising”

claims under Section 1125(a)(1)(B). Where necessary,

we’ll specify when we refer to particular varieties of false

association, such as trademark infringement and false

endorsement.

Appellants’ complaint and appellate briefs claim

that the use of Clemente’s name and image in connection

with the license plates, registration tags, and Sports

District implicate each provision of the Lanham Act we’ve

described in this overview: infringement of a registered

mark, false association, false advertising, and trademark

dilution. Although the district court and the parties all

5. Sometimes courts refer to Section 1125(a)(1)(A) claims as

“false designation of origin” claims, especially if plaintiffs allege

that a defendant misrepresented a product’s country of origin

on the packaging. See Societe Des Produits Nestle, S.A. v. Casa

Helvetia, Inc., 982 F.2d 633, 639 & n.8 (1st Cir. 1992). And it’s

not uncommon to see Section 1125(a) (either in whole or in part)

described as the “unfair competition” provision of the Lanham Act.

ETW Corp. v. Jireh Publ’g, Inc., 332 F.3d 915, 924 (6th Cir. 2003).

19a

Appendix A

agree that these are the distinct Lanham Act claims at

issue, it is not always easy to tell from the district court’s

decision and the parties’ briefing which Lanham Act claim

is under discussion at any given point. To compound the

problem, the parties’ briefs frequently talk past each other,

both here on appeal and in the district court. The long and

the short of it is that to properly assess the arguments on

appeal, we must impose order on chaos and thus spend

more time than usual in this opinion summarizing what

occurred below and what is argued presently. We beg the

gentle reader’s patience throughout.

Use in Commerce and Commercial Use

The heart of the parties’ dispute on the merits of the

Lanham Act is whether Clemente’s name and image were

used in commerce or used in connection with goods and

services. This is so because the district court perceived a

failure to plead “use in commerce” or use “in connection

with goods or services” as a fatal flaw for every Lanham

Act claim. See Clemente Props., 693 F. Supp. 3d at 241–43.6

The district court sometimes referred to one or both

requirements as “commercial use.” Id. at 241, 243; see also

3 McCarthy, supra, § 23:11.50 (noting that the statutory

6. The district court analyzed the issue in-depth only with

respect to the trademark infringement claim under Section 1114(1).

See Clemente Props., 693 F. Supp. 3d at 243–44. But its opinion

suggested that it believed the same reasoning applied to claims

under both Sections 1125(a) and Section 1125(c). See id. at 245

(explaining that appellants’ Section 1125(a)(1)(A) claim “again

fail[s] to allege ‘use in commerce’ and ‘in connection with goods

or services’”); id. at 246 (declining to “further analyze Plaintiffs’

dilution claim, as it also fails on the same grounds as the other

two Lanham Act claims”).

20a

Appendix A

requirement that use be in connection with goods and

services is “sometimes referred to as the ‘commercial

use’ requirement”).7

But before we delve into our analysis, we briefly

clear away some underbrush. Appellants take umbrage

with the district court’s discussion of commercial use on

multiple fronts, including the district court’s reliance on

the “restrictive” definition of “use in commerce” provided

in 15 U.S.C. § 1127 (“Section 1127”), which they imply sets

a standard for commercial use that was too favorable to

the Commonwealth Defendants. 8 But given the district

court’s bottom-line holding, we need not weigh in on this

potential statutory interpretation pitfall because we do

7. Unfortunately, the district court embarked on this analysis

without the benefit of meaningful briefing by the parties on the

motion to dismiss. Reaching these issues was not necessarily

improper. We’ve previously recognized that “[d]istrict courts

retain the power to dismiss complaints sua sponte for a failure to

state a claim,” especially where a dispositive issue of law exists.

Bazinet v. Beth Israel Lahey Health, Inc., 113 F.4th 9, 14 (1st Cir.

2024). But we’ve also warned that dismissing cases without the

guiderails of party briefing is “risky business.” González-González

v. United States, 257 F.3d 31, 37 (1st Cir. 2001).

8. Appellants argue Section 1127’s definition of “use in

commerce” only applies when assessing whether an individual

sufficiently used a word or phrase in commerce to develop

trademark rights and met the requirements for registering said

trademark, a position favored by the Ninth Circuit. See, e.g., Bosley

Med. Inst., Inc. v. Kremer, 403 F.3d 672, 677 (9th Cir. 2005). A

thoughtful examination of how the history and text of the Lanham

Act militate against the district court’s reliance on Section 1127’s

“use in commerce” definition is provided in the appendix to the

Second Circuit’s decision in Rescuecom Corporation v. Google

Incorporated, 562 F.3d 123, 131–41 (2d Cir. 2009) (dicta).

21a

Appendix A

not see (and appellants have not articulated) how this

misstep (if one exists) prejudiced or influenced the district

court’s ultimate view of appellants’ case. The primary

focus of the district court’s commerciality analysis was

whether appellants truly alleged “‘goods or services’ in

controversy,” which is what would be needed to trigger

Sections 1114 and 1125’s coverage. See Clemente Props.,

693 F. Supp. 3d at 243. To that end, the district court

seemed to have merely referenced the “use in commerce”

definition to bolster the fact that a use in connection

with goods or services was statutorily required. Id. at

242 (explaining that a use in commerce “can occur when

the trademark is used on goods for sale, or ‘in the sale

or advertising of services’” (quoting 15 U.S.C. § 1127)).

Appellants do not dispute that use in connection with

“goods” or “services” is, indeed, a necessary element of

each of their Sections 1114 and 1125 claims, regardless

of what “use in commerce” might mean. And it is telling

that the Commonwealth Defendants never refer to Section

1127’s definition of “use in commerce” in their defense of

the decision below. Therefore, we will focus our opinion on

the district court’s primary justification for its dismissal,

that is, whether the Commonwealth Defendants used

Clemente’s name or image9 with a “good” or “service”

under Sections 1114 and 1125.10

9. We refer to the use of Clemente’s name and image

throughout this section rather than the “mark” because the

analysis here impacts the claims under Section 1125(a), which do

not necessarily require use of a trademark.

10. Unlike Sections 1114(1) and 1125(a), Section 1125(c)

(1) does not expressly refer to “goods” or “services.” No party

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License Plates and Registration Tags

The cornerstone of the district court’s commercial

use analysis was simply that license plates and vehicle

registration tags are “not the classes of products or

services that trademark law protects” and that “issuing

motor vehicle license plates and tags cannot be considered

commercial use, as it is a clear government activity.”

Clemente Props., 693 F. Supp. 3d at 243. Appellants assert

that license plates and registration tags do fall within

the ambit of trademark law and that the “commercial

use” required by the Lanham Act is sufficiently broad to

cover government activity.11 Commonwealth Defendants’

discussion of this issue consists almost entirely of quotes

from the district court’s opinion, which they say got it

right.

disputes that a defendant must act in connection with goods and

services to violate Section 1125(c) or argues that a different test

applies for a dilution claim. See Bird v. Parsons, 289 F.3d 865, 879

(6th Cir. 2002) (requiring that the accused diluter “engage in the

commercial use in commerce” by using the mark as a trademark

(cleaned up)). For the purposes of this opinion, we assume that

the success of the dilution claim rises and falls with the district

court’s determination of whether there was a use in connection

with “goods or services” sufficient to sustain the other Lanham

Act claims.

11. Appellants argue in the alternative, with respect to their

Section 1114 claim, that the registered mark itself is the relevant

good or service. We see no need to reach this contention given

that Clemente’s name and image appear on license plates and are

not being sold unattached to any good or service. See, e.g., Bos.

Pro. Hockey Ass’n v. Dall. Cap & Emblem Mfg., 510 F.2d 1004,

1009–10 (5th Cir. 1975) (concerning the sale of cloth reproductions

of the trademarks).

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Appendix A

Appellants have the better side of this argument.

Courts have interpreted the “in connection with goods

or services” requirement to cover a broad range of

products. See United We Stand Am., Inc. v. United We

Stand, Am. N.Y., Inc., 128 F.3d 86, 89–90 (2d Cir. 1997)

(concluding that non-profit political activities fell within

the meaning of “services” covered by the Lanham Act,

which “applie[s] to defendants furnishing a wide variety

of non-commercial public and civic benefits”); see also

Lamparello v. Falwell, 420 F.3d 309, 314 (4th Cir. 2005)

(“[C]ourts have been reluctant to define [use in connection

with goods or services] narrowly.”). Judicial attempts to

define “goods” have relied on general-purpose definitions

from the Uniform Commercial Code and legal dictionaries.

See LegalForce RAPC Worldwide, PC v. LegalForce,

Inc., 124 F.4th 1122, 1126 (9th Cir. 2024) (“Equity is not

a ‘good’ for purposes of the Lanham Act, because it is

not a movable or tangible thing.” (citing U.C.C. § 2-105;

and then citing Goods, Black’s Law Dictionary (12th ed.

2024))); Radiance Found., Inc. v. NAACP, 786 F.3d 316,

323 (4th Cir. 2015) (defining a good as “a valuable product,

physical or otherwise, that the consumer may herself

employ” and a service as “an intangible commodity in the

form of human effort, such as labor, skill, or advice” (first

quoting Goods, Black’s Law Dictionary (10th ed. 2014);

and then quoting Services, Black’s Law Dictionary (10th

ed. 2014))). Those definitions naturally encompass a “wide

range of products.” Radiance Found., 786 F.3d at 324.

Here, the complaint alleges that the Commonwealth

Defendants collected money in exchange for license

plates and registration tags bearing Clemente’s name

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Appendix A

and image. Logic dictates that the license plates and

registration tags are the relevant products in this case.12

Indeed, federal courts have heard Lanham Act cases

against defendants who use infringing trademarks on

license plates on multiple occasions without questioning

whether such items constitute goods or services. See,

e.g., Au-Tomotive Gold Inc. v. Volkswagen of Am., Inc.,

603 F.3d 1133, 1134 (9th Cir. 2010) (describing two

car manufacturers’ lawsuit against a company that

manufactured automobile accessories including license

plates bearing the manufacturers’ logos); OBX-Stock, Inc.

v. Bicast, Inc., No. 2:04-CV-45-BO, 2006 U.S. Dist. LEXIS

112599, 2006 WL 8442143, at *1 (E.D.N.C. June 12, 2006)

(describing a trademark dispute between companies using

similar marks on various products, including license

plates), aff’d, 558 F.3d 334 (4th Cir. 2009); Cumulus

Media, Inc. v. Clear Channel Commc’ns, Inc., 304 F.3d

1167, 1170 (11th Cir. 2002) (describing evidence of a radio

station’s use of an infringing logo on various items and

advertisements, including license plates); Ringling Bros.Barnum & Bailey Combined Shows, Inc. v. Utah Div. of

12. At oral argument, a suggestion arose that there was no

“sale” of the license plates and registration tags because their

purchase was mandated by regulation, rather than a voluntary

exchange. The district court did not rely on the mandatory

nature of the exchange, nor was this argument raised in any of

the parties’ briefs, so we do not address that wrinkle here. See

Carreiro v. Rhodes Gill & Co., 68 F.3d 1443, 1449 (1st Cir. 1995)

(“This argument, not presented below and made for the first time

at oral argument, is waived.”). We note, in any event, that the

complaint does allege that the Commonwealth’s program involved

some voluntary sales and donations.

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Appendix A

Travel Dev., 170 F.3d 449, 451 (4th Cir. 1999) (describing

a trademark dilution case against Utah for the display of

an allegedly diluting slogan on motor vehicle license plates

and other advertising). Underscoring that license plates

and registration tags are mundane examples of goods

or services that fall within the ambit of trademark law,

appellants cite to the USPTO’s (to remind, United States

Patent and Trademark Office) Trademark ID Manual,

which compiles and classifies acceptable identifications

of goods and services for the purposes of trademark

registration.13 The Manual specifically contemplates the

registration of trademarks of items like license plates.14

See generally Trademark ID Manual, ID Master List,

USPTO, https://idm-tmng.uspto.gov/id-master-listpublic.html [https://perma.cc/RYK4-APKV] (providing

searchable database).

13. For example, Apple, Inc. has registrations in the mark

APPLE for computers and computer programs, which falls within

class 9. APPLE, Registration No. 1,078,312. Meanwhile, a business

named Westgate Chevrolet, Inc. has registered the same mark for

automobile dealerships (class 35) and automobile repair services

(class 37). APPLE, Registration No. 2,922,072.

14. We are somewhat skeptical of appellants’ reliance on

the Trademark ID Manual throughout their opening brief, but

we note appellants’ citation to the Trademark ID Manual only

because it tends to show that license plates and registration tags

are not categorically excluded from “goods or services” under

the Lanham Act as the district court suggests. To the extent

that appellants believe that the inclusion of certain items in the

USPTO Trademark ID Manual has some further significance in

establishing its Lanham Act claims, it has provided no support

for such a notion.

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Appendix A

The district court seemingly believed that items

issued by the government cannot be goods or services.

See Clemente Props., 693 F. Supp. 3d at 243 (first citing

Perry v. McDonald, 280 F.3d 159, 169 (2d Cir. 2001);

and then citing Walker v. Tex. Div., Sons of Confederate

Veterans, Inc., 576 U.S. 200, 135 S. Ct. 2239, 192 L. Ed.

2d 274 (2015)). While trademark owners suing state

governments have generally lost, neither the district

court nor the Commonwealth Defendants cite a case

suggesting that government activities are inherently,

or even presumptively, non-commercial. See Ringling

Bros., 170 F.3d at 451 (recognizing that a Utah agency

used a trademarked slogan “in connection with Utah

tourism services” but concluding that the plaintiff

failed to establish likelihood of dilution); Mihalek Corp.

v. Michigan, 814 F.2d 290, 292, 296–97 (6th Cir. 1987)

(considering a trademark claim against Michigan based

on the use of a slogan in an advertising and promotional

campaign focused on Michigan tourism, agriculture, and

business, and affirming determination that there was no

likelihood of confusion), on reh’g, 821 F.2d 327 (6th Cir.

1987).15 And though the majority of Lanham Act claims

involving license plates are asserted against novelty

or decorative license plates manufactured by private

companies, at least a few target a defendant’s use of

15. Governments are not only accused infringers in trademark

cases. They also assert ownership of their own trademarks by

virtue of their use of slogans, logos, and other devices in connection

with goods and services. See Fla. VirtualSchool v. K12, Inc.,

773 F.3d 233, 235–36 (11th Cir. 2014) (recognizing that a Florida

agency owns enforceable trademarks that it uses “in connection

with its online education program”).

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an infringing mark on state-issued license plates. See

Ringling Bros., 170 F.3d at 451 (lawsuit against Utah for

use of a slogan on license plates to advertise winter sports

attractions); Raptor Educ. Found. v. Rocky Mountain

Raptor Program, No. 10-CV-01222-WDM-MJW, 2010 U.S.

Dist. LEXIS 117069, 2010 WL 4537119, at *1 (D. Colo.

Nov. 3, 2010) (lawsuit against a non-profit defendant using

the plaintiff’s trademarked specialty license plate where

the Colorado legislature amended a statute governing

specialty license plates to permit issuance of a specialty

plate to the defendant).

As appellants point out, the district court supported

its conclusion that license plates and registration tags

are not “classes of products or services” with citations

to First Amendment cases involving custom license

plates. See Clemente Props., 693 F. Supp. 3d at 243 (first

citing Perry, 280 F.3d at 169; and then citing Walker,

576 U.S. 200). In these cases, private parties argued

that the First Amendment required the state to issue

customized license plates with words or phrases the state

deemed offensive. Walker, 576 U.S. at 206 (describing a

state’s denial of an application of specialty license plates

displaying a Confederate battle flag and referencing

“Sons of Confederate Veterans”); Perry, 280 F.3d at 163

(considering whether the revocation of “SHTHPNS”

vanity plates violates First Amendment or due process

rights). At a high level, these opinions recognize that

speech on license plates is associated with the government,

and the government may refuse to issue custom plates

to avoid being associated with offensive language. See

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Walker, 576 U.S. at 207–09; Perry, 280 F.3d at 169–70.16

But even assuming that the public might associate

expressive activity on a government-issued license plate

with the Commonwealth, we fail to see how that fact

makes the license plates themselves any less of a good or

service.17 Accordingly, we disagree with the district court

that license plates and registration tags cannot be goods

or services under the Lanham Act.

The district court mentioned an alternative basis for

its conclusion that commercial use was not adequately

pled, which it supported with a citation to Utah Republican

Party v. Herbert, 141 F. Supp. 3d 1195, 1205 (D. Utah 2015).

16. Our above-line description generalizes Walker and Perry.

There are differences between these two cases, which might prove

important in a First Amendment case. Compare Walker, 576 U.S.

at 207–09 (concluding that a specialty license plate amounted to

government speech), with Perry, 280 F.3d at 169–70 (concluding

that a vanity license plate was a nonpublic forum). But no First

Amendment argument is raised here. And as far as we can tell, the

district court cites the First Amendment cases only to establish

a link between license plates and governments.

17. At best, this reasoning seems to go to likelihood of

confusion (i.e., nobody would have been confused as to the source

of the license plates because everyone knows license plates come

from the government). See WCVB-TV v. Bos. Athletic Ass’n,

926 F.2d 42, 45–46 (1st Cir. 1991) (concluding that there would

be no sponsorship confusion in part because (1) the television

broadcaster offered to air frequent disclaimers that coverage of

plaintiff’s sports event was unofficial and (2) viewers would not care

about sponsorship of broadcast). But the district court expressly

stated that it did not need to reach likelihood of confusion for the

Section 1114 claim. Clemente Props., 693 F. Supp. 3d at 243.

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According to the district court, Utah Republican stands

for the proposition that “[u]nless there is a competing

good or service labeled or associated with the plaintiff’s

trademark, the concerns of the Lanham Act are not

invoked.” Clemente Props., 693 F. Supp. 3d at 242 (quoting

Utah Republican, 141 F. Supp. 3d at 1204). Later in its

opinion, the district court commented that appellants’

Lanham Act claims failed because “they have not alleged

that they actually provide the same ‘goods or services’” as

the government. Id. at 243 (emphasis added). Essentially,

the district court seemed to say that even if license plates

were goods or services, appellants could not state a claim

unless they provided the same goods or services as the

government. Neither party has confronted this aspect of

the district court’s commercial use analysis. But because

the district court’s opinion arguably presents the absence

of “competing” goods or services as an alternative basis

on which we could affirm, we alight briefly on this here.

The district court’s assumption that a trademark

infringement claim (or any Lanham Act claim) can only

stand if the plaintiffs provide the same goods or services

as the defendant is not consistent with the caselaw. See,

e.g., Halicki Films, LLC v. Sanderson Sales & Mktg.,

547 F.3d 1213, 1227–28 (9th Cir. 2008) (holding that a

trademark owner has standing to sue for infringement

even if her mark is registered for a class of products “that

does not compete directly with the defendant’s products”

and explaining that relatedness of the parties’ goods “is,

by contrast, a merits question”); Team Tires Plus, Ltd.

v. Tires Plus, Inc., 394 F.3d 831, 833 (10th Cir. 2005)

(explaining that the view “that a trademark provides

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Appendix A

protection only when the defendant uses the mark on

directly competing goods . . . is no longer good law” and

has not been since the early 1900s); Beacon Mut. Ins.

v. OneBeacon Ins. Grp., 376 F.3d 8, 16 (1st Cir. 2004)

(explaining that the Lanham Act is not “restricted” to

the “classic situation” where the “case involves directly

competing goods”). The similarity of the parties’ product

lines or service offerings is one factor among many that

a court might consider when deciding whether there is

likelihood of confusion. See Beacon Mut., 376 F.3d at 15.

This factor would not make sense if the only “goods or

services” protected by trademark law were the same

“goods or services.” To the extent Utah Republican

implies that all trademark infringement or Lanham Act

claims require competition between the plaintiff and the

defendant, we disagree.

Utah Republican relies on two lines of cases. 141

F. Supp. 3d at 1204–05 (first citing Utah Lighthouse

Ministry v. Found. for Apologetic Info. & Rsch., 527 F.3d

1045, 1052–53 (10th Cir. 2008); and then citing Wash. State

Republican Party v. Wash. State Grange, 676 F.3d 784,

795 (9th Cir. 2012)). One line concludes that there is no

commercial use (i.e., no use in connection with goods and

services) where a defendant uses a plaintiff’s trademark

merely to comment on or criticize the plaintiff. See Utah

Lighthouse, 527 F.3d at 1048–49, 1052–54 (concluding that

a parody website was non-commercial where it provided

no goods and services, earned no revenue, did not link

to any commercial sites, and merely “comment[ed] on

the trademark owner’s goods or services” (citing, among

other cases, Bosley Med. Inst., Inc. v. Kremer, 403 F.3d

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672, 672 (9th Cir. 2005))); Bosley, 403 F.3d at 677–80

(concluding that a dissatisfied customer’s use of mark in

the domain name of a highly critical website was not in

connection with the sale of goods or services); see also Int’l

Ass’n of Machinists & Aerospace Workers, AFL-CIO v.

Winship Green Nursing Ctr., 103 F.3d 196, 209–10 (1st

Cir. 1996) (Saris, J., concurring) (opining that there is

no commercial use of a union-plaintiff’s mark where the

defendant-employer distributed anti-union pamphlets that

displayed the union’s logo and purported to be written on

union letterhead). These cases suggest that where there is

no “sale of goods or services,” the absence of competition

between the parties shows that the defendant’s use of

the plaintiff’s mark was merely “in connection with

the expression of [the defendant’s] opinion about [the

plaintiff’s] goods and services,” rather than to offer its own

goods and services as necessary to violate the Lanham

Act. Bosley, 403 F.3d at 679. The other case cited by Utah

Republican, Washington State Republican, applied this

principle in the context of a state government’s use of a

political party’s mark on ballot labels. 676 F.3d at 795. In

rejecting the trademark claims, which were an ancillary

issue, the Ninth Circuit noted that commercial use does

not require an “actual sale” of goods or services, but

“[a]t minimum . . . the plaintiff must show that the

defendant ‘offers competing services to the public.’” Id.

(quoting Bosley, 403 F.3d at 679).

At best, then, Utah Republican stands for the

proposition that there may be some subset of trademark

cases in which no sale of goods or services by the

defendant is contemplated (such as when the defendant

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criticizes the plaintiff), and competition helps illuminate

whether the defendant used an infringing mark on goods

or services. Even if we accepted the view of these nonbinding cases, the factual allegations of this complaint

are not analogous. Drawing all reasonable inferences

in favor of appellants, as we must, the Commonwealth

Defendants did not use Clemente’s name or image simply

to offer commentary about Clemente or to conduct some

administrative government task. The Commonwealth

Defendants placed Clemente’s name and image on

license plates and registration tags and then charged a

special fee to members of the public in exchange for those

“commemorative” products. None of the cases we’ve just

described features an analogous sale or exchange of a

product bearing the plaintiff’s claimed mark (or other

device) for money. We thus see no reason to dismiss

the Lanham Act claims on the basis that there was no

“competing” service offered by the government here.

Having thoroughly mined the district court’s opinion

for any basis on which we could affirm its holding as to

the license plates and registration tags, we agree with

appellants that the ruling is unsupported.18

18. The district court also devoted some space in its

commerciality discussion to the “historical significance” of the

50th anniversary of Clemente’s 3,000th hit and “the public value of

information about the game of baseball and its players.” Clemente

Props., 693 F. Supp. 3d at 244. The parties don’t linger on this point

on appeal, and it is not immediately evident how this fact influenced

the district court’s analysis. We note that the two cases the district

court cited in support of this point discuss the public interest

in baseball in the context of First Amendment limitations on a

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Appendix A

The Sports District

A careful reader will note that our discussion of

commerciality and “goods or services” has thus far

focused on the license plates and registration tags, without

mentioning the Sports District. Appellants argue that

dismissal of claims of “trademark infringement under

the Lanham Act regarding the creation of the Roberto

Clemente Sports District. . . . must be reversed” because

the district court “[s]urprisingly” did not analyze it.

Indeed, although the district court mentions “Act 672022” at various points in its analysis of the merits of

the Lanham Act claims, it never addressed the Sports

District as a potential good or service with respect to

the Commonwealth Defendants, or otherwise assessed

use of Clemente’s name in relation to the Sports District

as a good or service. See Clemente Props., 693 F. Supp.

3d at 240–46.

The allegations surrounding the Sports District

are tied to the other claims against the Commonwealth

Defendants. Proceeds from the sale of license plates and

registration tags were set aside to raise money for the

Sports District. And the Commonwealth Defendants

invoked Clemente’s name when soliciting donations for

the Roberto Clemente Sports District Fund. Neither

plaintiff’s right of publicity, rather than commerciality under the

Lanham Act. See C.B.C. Distrib. & Mktg., Inc. v. MLB Advanced

Media, L.P., 505 F.3d 818, 823 (8th Cir. 2007); Cardtoons, L.C. v.

MLB Players Ass’n, 95 F.3d 959, 972 (10th Cir. 1996). The brief

discussion of the Lanham Act in Cardtoons turned primarily on

likelihood of confusion grounds. 95 F.3d at 966–67.

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Appendix A

the district court’s opinion nor the Commonwealth

Defendants’ brief gave any rationale for why a trademark

infringement claim could not proceed against defendants

who use someone’s name or image to solicit donations in

support of public non-profit services, including sports and

recreation. See, e.g., United We Stand, 128 F.3d at 90.

Moreover, the Commonwealth Defendants offer no basis

for why we should consider the Sports District itself a

non-commercial use, much less defend the district court’s

approach.19 Accordingly, to the extent that allegations

regarding the Sports District might supply a distinct basis

for infringement, we consider this an open issue for the

district court to decide on remand.

For the reasons above, we conclude that the district

court erred in holding that appellants failed to allege any

use of Clemente’s name or image in connection with goods

or services, at least for the reasons given in the opinion

19. The district court did conclude that allegations regarding

the Authority failed to allege use in commerce or commercial

use. See Clemente Props., 693 F. Supp. 3d at 252–53. (Recall

that the only allegations relating to the Authority have to do

with the Sports District.) But the court’s holding with respect

to the Authority does not seem to have any bearing as to the

Commonwealth Defendants. This is because the district court

understood the only allegations relating to the Authority to be

that the Authority violated the Lanham Act “by its mere inclusion

or mention in the dispositions of Act 67-2022.” Id. at 253. (We say

more about the district court’s reasoning when we address the

claims against the Authority.) The Commonwealth Defendants’

alleged actions comprise more than mere mention in Act 67-2022.

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Appendix A

below – namely, that license plates and registration tags

are not the “classes of products” protected by trademark

law and the governmental nature of such products. What

does this mean for the outcome of this case? As we said

above, the district court considered the failure to allege

“commercial use” a sufficient basis on which to dismiss

each Lanham Act claim. See Clemente Props., 693 F. Supp.

3d at 242–46. For claims under Sections 1114 and 1125(c)

(infringement of the registered mark and trademark

dilution), this was the only basis stated for dismissal of

the Lanham Act claims on the merits. 20 See id. at 242–44.

For the claims under Section 1125(a), however, the district

court offered several additional bases for dismissal (which

appellants separately challenge on appeal). We consider

those now, focusing first on 15 U.S.C. § 1125(a)(1)(A) (false

association or unregistered trademark infringement), and

then on § 1125(a)(1)(B) (false advertising).

False Association, Section 1125(a)(1)(A)

The district court offered myriad rationales, aside

from lack of commercial use, for why the “claims under

Section 43(a)” should be dismissed. See Clemente Props.,

693 F. Supp. 3d. at 244–46. Section 1125 contemplates two

distinct causes of action. See 15 U.S.C. § 1125(a)(1)(A) (false

association or unregistered trademark infringement);

§ 1125(a)(1)(B) (false advertising); Clemente Props., 693

F. Supp. 3d. at 244–45; see also Lexmark Int’l, Inc. v.

Static Control Components, Inc., 572 U.S. 118, 122, 134 S.

20. Thus we need not address other issues raised in

appellants’ brief, such as likelihood of confusion or dilution by

tarnishment, with respect to those claims.

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Appendix A

Ct. 1377, 188 L. Ed. 2d 392 (2014). We hinted earlier that

identifying which cause of action (if not both) the district

court’s opinion was referring to at any given time is an

exercise in close reading. 21 As best we can tell, there were

three reasons for dismissal of the Section 1125(a)(1)(A)

claim. First, the court believed that appellants failed to

establish standing under the Lexmark zone-of-interests

test. See Clemente Props., 693 F. Supp. 3d at 245. Second,

the district court held that any claim based on “use of the

image of Roberto Clemente” could not proceed because

“[n]o reasonable jury could find a likelihood of confusion.”

Id. at 246 (quoting ETW Corp. v. Jireh Publ’g, Inc., 332

F.3d 915, 923 (6th Cir. 2003)). Finally, the district court

concluded that the complaint “reflects a conclusory and

formulaic recitation of certain elements of a trademark

infringement cause of action that is insufficient to survive

a motion to dismiss.” Id. at 246. We address appellants’

position about each line of reasoning.

Zone-of-Interests Test

In Lexmark, the Supreme Court articulated a test

for determining whether someone was “within the

21. For instance, the heading of the section of the opinion

that deals with Section 1125 is titled “False Advertising Under the

Lanham Act,” notwithstanding the fact that the discussion that

follows includes the “false association claim under subsection A”

and touches on the “dilution claim.” Clemente Props., 693 F. Supp.

3d at 244, 246. Likewise, one paragraph begins as a discussion

of why, “as a false advertising claim, Plaintiffs’ cause is plainly

insufficient” but goes on to cite a trademark infringement case.

Id. at 245–46 (citing Pirone v. MacMillan, Inc., 894 F.2d 579 (2d

Cir. 1990)).

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Appendix A

class of plaintiffs” allowed to bring a false advertising

claim under the Lanham Act, or to use the legal jargon,

whether, as a matter of statutory interpretation, a plaintiff

is within the “zone of interests” protected by Section

1125(a). See 572 U.S. at 128–29. (This concept sometimes

goes by the name “statutory standing.” Id. at 128 n.4.)

“To invoke the Lanham Act’s cause of action for false

advertising,” the Supreme Court held, “a plaintiff must

plead . . . an injury to a commercial interest in sales or

business reputation proximately caused by the defendant’s

misrepresentations.” Id. at 140. The district court applied

this test toboth the false association (or unregistered

trademark infringement) claim under Section 1125(a)(1)

(A) and the false advertising claim under Section 1125(a)

(1)(B)22 and concluded that appellants suffered no injury

to a commercial interest because there was no allegation

that the Commonwealth Defendants’ actions “caused

consumers to withhold trade from them.” Clemente Props.,

693 F. Supp. 3d at 245 (cleaned up). Appellants urge us to

consider their allegations of reputational injury caused

by the Commonwealth’s actions. And they point out that

this court has independently recognized that the “relevant

commercial injury” under Section 1125(a) “includes not

22. Because appellants do not challenge this approach, we

assume without deciding that the Lexmark test can be applied

to Section 1125(a)(1)(A). But we pause to note that Lexmark may

well have intended to set forth a zone-of-interests test only with

respect to false advertising. See 572 U.S. at 131–32. In a claim for

trademark infringement, it’s hard to imagine much debate that

the owner of a trademark is within the class of plaintiffs entitled

to sue under Section 1125(a)(1)(A). See Quabaug Rubber Co. v.

Fabiano Shoe Co., 567 F.2d 154, 159 (1st Cir. 1977).

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only loss of sales but also harm to the trademark holder’s

goodwill and reputation.” Beacon Mut., 376 F.3d at 10. We

agree that the district court took too narrow a view of what

constitutes commercial injury. The district court should

have considered appellants’ allegations of reputational

harm, even if there were no express allegation regarding

a loss of sales, because Lexmark plainly contemplates an

injury to either “sales or business reputation.” 572 U.S. at

140 (emphasis added); cf. Welch Foods, Inc. v. Nat’l Union

Fire Ins. Co., 659 F.3d 191, 194 (1st Cir. 2011) (explaining

that “the word or must be given effect” when interpreting

a contract).

While not everyone who faces public criticism or

negativity necessarily suffers a cognizable commercial

injury under Section 1125(a), Lexmark, 572 U.S. at 140

(requiring “an injury to a commercial interest in . . .

business reputation” (emphasis added)), here, appellants

made plausible allegations that their business reputation

in Puerto Rico was harmed by association of Clemente’s

name and image with an unpopular product (the license

plates and registration tags). Taking the complaint’s

allegations as true and drawing all plausible inferences

in favor of our appellants, appellants’ business interests

in licensing the Clemente mark for merchandise or other

projects were plausibly impacted by this public blowback.

This is especially so where appellants’ business reputation

is built in part on an association with charitable endeavors,

and the public backlash was in response to the perceived

extortionate nature of the commemorative license plates

and registration tags, goods that all Puerto Rico residents

who needed new plates or tags in 2022 were forced to

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Appendix A

purchase. See Beacon Mut., 376 F.3d at 16 (holding that

relevant confusion may be shown not only in trademark

owner’s “actual or potential” customers but also “others

whose confusion threatens the trademark owner’s

commercial interest in its mark”). We thus conclude that

appellants adequately pled a commercial injury within

the zone of interests of Section 1125(a) to survive a motion

to dismiss. See Advance Dx, Inc. v. YourBio Health,

Inc., 753 F. Supp. 3d 53, 68 (D. Mass. 2024) (concluding

that a reputational injury was adequately alleged under

Lexmark where the complaint alleged that the defendant’s

actions “adversely . . . affected [the plaintiff’s] reputation

in the community as a provider of accurate and reliable”

products); cf. Souza, 68 F.4th at 119–20 (recognizing that

reputational injury that “may have” limited plaintiffs’

“work opportunities” “would likely satisfy Lexmark’s

requirements” but affirming dismissal on summary

judgment where the plaintiff provided no evidence

supporting that claimed injury).

No Claim Based on Clemente’s Image

We turn then to the district court’s rationale that no

one could have been confused by the use of Clemente’s

image on the license plates. See Clemente Props., 693

F. Supp. 3d. at 245–46. In so stating, we understand the

district court to be holding that there was no valid claim

for infringement of an unregistered mark in Clemente’s

image. In support, the district court cited a Second

Circuit case involving the trademarked name of another

“baseball legend,” Babe Ruth. Id. at 245 (citing Pirone v.

MacMillan, Inc., 894 F.2d 579 (2d Cir. 1990)). In Pirone,

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Appendix A

Ruth’s daughters sued the publisher of a baseball calendar

that contained three photos involving Ruth, along with

photographs of many other famous baseball players.

Pirone, 894 F.2d at 581. The Second Circuit affirmed

summary judgment for the calendar publisher on the

claims under Section 1114 (infringement of a registered

mark) and Section 1125(a)(1)(A) (false association). Pirone,

894 F.2d at 582, 586. The district court seemed to have

drawn two main points from this case. First, the district

court expressed skepticism that appellants had any

trademark rights in images of Clemente. See Clemente

Props., 693 F. Supp. 3d. at 245–46 (“[A]s a general

rule, a person’s image or likeness cannot function as a

trademark.” (alteration in original) (quoting ETW Corp.,

332 F.3d at 922)). And second, the district court believed

that Pirone’s conclusion that no reasonable juror could be

confused by Ruth’s photographs in the calendar applied

equally to this case. See id. at 246. We start with the first

point.

Pirone, as the district court noted, holds that

“photograph[s] of a human being” do not “inherently”

serve a source identifying function (or to use trademark

lingo, they are not “inherently ‘distinctive’”). Id. at 245

(quoting Pirone, 894 F.2d at 583). While it might be

possible to establish trademark rights in a photograph of

a human being, the plaintiff would need to show that “a

particular photograph was consistently used on specific

goods.” Pirone, 894 F.2d at 583. Our assessment of how

Pirone applies to this case is clouded by the fact that

appellants never come right out and say whether they

assert any unregistered rights in an image of Clemente.

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Here is what we gather from the breadcrumbs appellants

have dropped.

We know that (1) appellants have a registered mark

in the words “Roberto Clemente” and (2) appellants

believe that “any pictorial depiction of Roberto Clemente,”

the human being, “is a legal equivalent for trademark

purposes.” Appellants’ brief discusses “legal equivalents”

in the context of their Section 1114 claim for infringement

of a registered mark, asserting that “a picture mark can

infringe a word mark where the picture is a depiction of the

word.” (quoting Fleischer Studios, Inc. v. A.V.E.L.A., Inc.,

925 F. Supp. 2d 1067, 1077 (C.D. Cal. 2012)). We read this

as an assertion that appellants’ registered mark has been

infringed by the use of Clemente’s image on the license

plates and registration tags. 23 But this gives no indication

either way whether appellants also assert ownership over

an unregistered trademark in Clemente’s image. In the

context of Section 1125(a), appellants’ brief makes multiple

assertions that the Commonwealth defendants used “the

trademark” without explaining what that mark is (or

is not). So we agree with the district court that, to the

extent appellants are asserting unregistered trademark

rights in some image of Roberto Clemente (either similar

23. We take no sides on this issue, which was not addressed

in the district court’s opinion or the appellees’ brief. The district

court may not have seen any need to address this point, which was

included in appellants’ opposition to the motion to dismiss below,

because appellants alleged that the word “Clemente” appeared

on the license plates and registration tags. There was thus no

need to resort to “legal equivalence” between words and images

to understand what infringement occurred.

42a

Appendix A

or identical to the ones used by the Commonwealth on

its license plates and registration tags), they failed to

adequately plead such rights. The complaint does not

allege that appellants consistently used a particular image

of Clemente in connection with goods or services, such

that it became an identifier of the source of those goods

or services. See Pirone, 894 F.2d at 583; ETW Corp., 332

F.3d at 923 (rejecting “a sweeping claim to trademark

rights in every photograph and image of [Tiger] Woods,”

the golfer).

But appellants have another angle under Section

1125(a)(1)(A). Echoing the allegations of their complaint,

they say they have a claim that is “equivalent” but also

“differ[ent] from” a right of publicity claim under state

law. 24 Based on this description and the cases appellants

24. The phrase “right of publicity” refers to a tort under state

law, which, in general terms, “recognize[s] the right of well known

individuals to control commercial exploitation of their names

and likenesses.” Bi-Rite Enters. v. Bruce Miner Co., 757 F.2d

440, 442 (1st Cir. 1985); see Hepp v. Facebook, 14 F.4th 204, 223

(3d Cir. 2021) (Cowen, J., concurring in part) (collecting sources

to demonstrate variation in the right of publicity claim between

states). Separately, courts have recognized Section 1125(a)(1)(A)

as a federal vehicle for bringing claims against the unauthorized

commercial use of an individual’s name or likeness. Using the

phrase “right of publicity” here wrongly implies that appellants

are asserting a claim under Puerto Rico law, which has different

elements than the federal false endorsement claim. In particular, a

state right of publicity claim does not usually require any showing

of confusion, meaning that it can “potentially” be read “more

expansive[ly]” than the Lanham Act. Rogers v. Grimaldi, 875

F.2d 994, 1004 (2d Cir. 1989).

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Appendix A

cite, see Electra v. 59 Murray Enters., 987 F.3d 233,

257 (2d Cir. 2021); ETW Corp., 332 F.3d at 924; Parks

v. LaFace Recs., 329 F.3d 437, 445 (6th Cir. 2003), we

understand appellants to be asserting what we earlier

called a false endorsement claim under Section 1125(a)

(1)(A), something which the district court seemingly

missed. 25 A false endorsement claim recognizes a right

in a persona or identity and permits suit under Section

1125(a)(1)(A) when “endorsement of a product is implied

through the imitation of a distinctive attribute of the

[person’s] identity.” Fifty-Six Hope Rd. Music, Ltd. v.

A.V.E.L.A., Inc., 778 F.3d 1059, 1066–67, 1068–69 (9th

Cir. 2015) (cleaned up) (affirming a verdict in favor of

the musician Bob Marley’s children against a defendant

who used Marley’s photographs on T-shirts and other

merchandise); see also Souza, 68 F.4th at 109 (considering

a false endorsement claim by professional models based

on the defendant’s use of their photographs in strip club

advertisements); Facenda v. NFL Films, Inc., 542 F.3d

1007, 1014–15, 1023–25 (3d Cir. 2008) (considering whether

the use of a football broadcaster’s voice in a television

program about the production of a football video game

25. Appellants make it more difficult than necessary to

identify what their Section 1125(a)(1)(A) claim is by insisting

on calling Section 1125(a) “the federal equivalent protection of

the right of publicity.” Similarly, although their opposition to

the motion to dismiss below expressly asserted rights in “an

individual’s image or likeness” under Section 1125(a) “akin to

that of a traditional trademark holder,” this helpful information

about their false endorsement claim appeared confusingly under

the heading “Right of Publicity.” We think that calling any claim

under Section 1125(a) a “right of publicity” claim is misleading.

44a

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falsely implied the broadcaster’s endorsement of the video

game). In such cases, as we’ve already noted, an aspect

of a persona or identity takes the place of a traditional

trademark. Compare Souza, 68 F.4th at 112 (“In a false

endorsement case like this one, the ‘mark’ in question

is the identity of the purported endorser herself.”), and

White, 971 F.2d at 1400 (“In cases involving confusion

over endorsement by a celebrity plaintiff, ‘mark’ means

the celebrity’s persona.”), with Donoghue v. IBC USA

(Publ’ns), Inc., 70 F.3d 206, 218 (1st Cir. 1995) (affirming

the conclusion that a plaintiff’s “name was worthy of

trademark protection”). To assert a false endorsement

claim, appellants may not need to assert trademark

rights in a particular photograph of Clemente; instead,

their claim would be based on the Commonwealth’s use

of Clemente’s likeness, which amounts to a “symbol”

or “device” under Section 1125(a)(1)(A). See Fifty-Six

Hope, 778 F.3d at 1068–69. In short, Section 1125(a)(1)

(A) seemingly permits appellants to bring a claim based

on Clemente’s image even absent a trademark. Because

the district court never considered this possibility and

the Commonwealth Defendants do not argue against

appellants’ false endorsement theory on appeal, an issue

this circuit has not addressed on the merits before, we

will not affirm dismissal of the Section 1125(a)(1)(A) claim

on the ground that there was no plausible trademark in

Clemente’s photograph. 26

26. False endorsement cases have been appealed to this

circuit, but we resolved those appeals without diving into the nitty

gritty of the claims. See Ji v. Bose Corp., 626 F.3d 116, 120, 128–30

(1st Cir. 2010) (recounting that the district court had dismissed

the plaintiff’s false endorsement claim and assessing whether

45a

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That said, likelihood of confusion is still an element

of a false endorsement claim. Fifty-Six Hope, 778 F.3d at

1069–71; 15 U.S.C. § 1125(a)(1)(A). Thus, we turn to the

second principle the district court seemed to have drawn

from Pirone, that it would be impossible for a reasonable

jury to find a likelihood of confusion based on a photograph

of a famous baseball player. See Clemente Props., 693 F.

Supp. 3d at 246. Appellants criticize the district court

for ignoring allegations regarding confusion, which

they assert “naturally happened.” Strangely, neither

the district court nor the parties cited the multi-factor

balancing test this court applies when assessing whether

a defendant’s use of a trademark is likely to confuse. See

Beacon Mut., 376 F.3d at 15. That test directs courts to

consider:

(1) the similarity of the marks; (2) the similarity

of the goods; (3) the relationship between the

parties’ channels of trade; (4) the relationship

between the parties’ advertising; (5) the classes

the district court correctly denied a motion for attorney’s fees),

abrogated by Dupree v. Younger, 598 U.S. 729, 143 S. Ct. 1382, 215

L. Ed. 2d 636 (2023); McBee v. Delica Co., 417 F.3d 107, 111 (1st

Cir. 2005) (describing a false endorsement claim by a “well-known

American jazz musician” against a Japanese clothing company

and affirming dismissal on jurisdictional and standing grounds).

Because appellants describe their false endorsement claim only

in broad strokes, and the Commonwealth Defendants do not make

any arguments against appellants’ reliance on false endorsement

caselaw, we have no occasion to comment on the exact boundaries

of such a claim. We leave it to the district court, with the benefit of

adversarial briefing, to rule on any disputes in the first instance

on remand.

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Appendix A

of prospective purchasers; (6) evidence of actual

confusion; (7) the defendant’s intent in adopting

its mark; and (8) the strength of the plaintiff’s

mark.

Id. Our sister circuits have also developed modified

versions of this test specific to false endorsement

claims, which often focus on the recognizability of the

individual whose identity is being infringed, rather

than the strength of the mark. See Fifty-Six Hope, 778

F.3d at 1069 (providing a similar eight-factor test in the

false endorsement context); Souza, 68 F.4th at 110–13

(explaining that recognizability of the individual “properly

calibrates strength” of the mark). But the parties and

the district court do not mention any false-endorsementspecific likelihood of confusion test either.

The district court’s analysis of confusion instead

relied primarily on Pirone. There, the Second Circuit

acknowledged that photographs of Babe Ruth could

be “symbols” under Section 1125(a), “whether or not a

registered trademark is involved.” 894 F.2d at 584. It

nevertheless concluded that, because those photographs

were not used in a way to “indicate origin or represent

sponsorship,” “[n]o reasonable jury could find likelihood

of confusion.” Id. at 584–85. The district court treated

Pirone as directly on point and was persuaded that

appellants’ assertion of confusion based on the use of

an athlete’s photograph must also fail. See Clemente

Props., 693 F. Supp. 3d at 246. But even if we, like the

district court, found Pirone’s analysis to be persuasive, its

holding was not as broad as the district court seemed to

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Appendix A

think. Pirone affirmed summary judgment based on the

context of the defendant’s use: a calendar that featured

many “[p]hotographs of baseball, its players and assorted

memorabilia.” 894 F.2d at 584. It reached its conclusion

that likelihood of confusion could not be established as

a matter of law “[i]n the context of such a compilation”

where Babe Ruth was just “one ballplayer among the

many featured in the calendar.” Id. at 585. This case

involves no similar “compilation,” but instead just the use

of Clemente’s name and image in connection with a project

whose proceeds were to be collected for “the Roberto

Clemente Sports District Fund.”

And on a motion to dismiss, we are required to accept

the facts pled as true and draw all reasonable inferences in

favor of the plaintiffs. Here, appellants say their complaint

plausibly alleges actual confusion by the residents of

Puerto Rico, who publicly “attack[ed]” appellants based

on the mistaken belief that they were receiving money

from the commemorative license plates and registration

tags. It also plausibly alleges that Clemente, based on his

achievements as a baseball player and his humanitarian

efforts, was a highly recognizable figure whose name

and image appellants had licensed for use in a different

license plate program. Allegations like these often tilt

the likelihood of confusion balance in favor of plaintiffs,

regardless of the exact test used. See, e.g., Beacon Mut.,

376 F.3d at 15–-19 (laying out and applying the likelihood

of confusion test, including emphasis on actual confusion,

similarity of goods and services, and strength of mark);

Fifty-Six Hope, 778 F.3d at 1069–71 (applying the test

for likelihood of confusion in celebrity false endorsement

48a

Appendix A

cases and noting as important factors both “high level of

recognition of [the celebrity’s] image among Defendants’

target market” and association of the mark with apparel

and actual confusion). The Commonwealth Defendants

respond with a broadside, claiming that appellants “fail to

identify any facts in their Amended Complaint that, taken

as true, demonstrate a plausible likelihood of confusion.”

That is plainly contradicted by the allegations we’ve just

summarized. Beyond that, the Commonwealth Defendants

marshal no argument for why any of the likelihood of

confusion factors work in their favor in this case.

Taking the factual allegations as true, we conclude

that likelihood of confusion was adequately pled and thus

dismissal of the false association claim could not rest on

an absence of likelihood of confusion. We turn then to the

district court’s final stated basis for dismissing the Section

1125(a)(1)(A) claim.

Conclusory Pleading

The district court’s final remark on the Section

1125(a)(1)(A) claim was that the allegations supporting

“trademark infringement” were lacking factual detail

and merely conclusory. See Clemente Props., 693 F.

Supp. 3d at 246. “A conclusory allegation . . . is one which

simply asserts a legal conclusion” rather than “a specific

factual allegation . . . that merely lacks some surrounding

context.” Rodríguez-Vives v. P.R. Firefighters Corps.,

743 F.3d 278, 286 (1st Cir. 2014) (holding that a complaint

was not conclusory where it “described actions of which

[plaintiff] had personal knowledge in sufficient detail to

49a

Appendix A

make them plausible”). After reviewing the allegations

made in support of appellants’ Section 1125(a)(1)(A)

claim, we find them to be sufficiently factual and specific.

The complaint alleged a “word, term, name, symbol, or

device,” 15 U.S.C. § 1125(a) – Clemente’s name and image

– that were used on license plates, registration tags, and

in the names of the Sports District and the Fund. As we

just recounted, the complaint also alleged facts showing

likelihood of confusion, including actual confusion. The

district court called out one specific element as insufficient:

that was the “Plaintiffs’ damages allegations,” which the

district court said state “no more than that [appellants]

have been harmed from the alleged violation of the

statute.” Clemente Props., 693 F. Supp. 3d at 246. But,

as we explained with respect to the Lexmark zone-ofinterests analysis, appellants did plead reputational

damages caused by the Commonwealth’s use of Clemente’s

name and image that are cognizable under the Lanham

Act. See Beacon Mut., 376 F.3d at 16–17. And appellants

also sought profits that the Commonwealth made from

the commemorative license plates and registration tags.

Moreover, the complaint identified the specific surcharges

associated with products bearing Clemente’s name and

image and a public statement by the Commonwealth that

it expected to collect $15 million from the program. Such

damages may be recovered under the Lanham Act. See

15 U.S.C. § 1117(a). 27

27. That statute provides as follows:

When a violation of any right of the registrant of a

mark registered in the Patent and Trademark Office,

a violation under section 1125(a) or (d) of this title, or a

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Appendix A

The district court also faulted appellants for only

offering a “formulaic recitation of certain elements” of the

cause of action. Clemente Props., 693 F. Supp. 3d at 246.

While the counts of the complaint did largely consist of

quotations of relevant Lanham Act provisions, they also

incorporated by reference the factual allegations that

had been laid out earlier in the complaint. See Young v.

Wells Fargo Bank, N.A., 717 F.3d 224, 233 (1st Cir. 2013)

(concluding that a complaint sufficiently put defendants

on notice of the claim where a count, though “pled in a

muddled fashion, . . . incorporate[d] [relevant] factual

allegations by reference”); cf. García-Catalán v. United

States, 734 F.3d 100, 103 (1st Cir. 2013) (“We emphasize

that the complaint must be read as a whole.”). We thus

disagree with the district court that the allegations of the

complaint were too conclusory to state a claim for relief.

Having reviewed all the district court’s stated

bases for dismissal, we conclude that appellants have

adequately pled a claim under Section 1125(a)(1)(A) for

false endorsement by use of Clemente’s name and image.

False Advertising, Section 1125(a)(1)(B)

Our next stop is appellants’ cause of action for false

advertising under Section 1125(a)(1)(B). The district court

willful violation under section 1125(c) of this title, shall

have been established in any civil action arising under

this chapter, the plaintiff shall be entitled . . . to recover

(1) defendant’s profits, (2) any damages sustained by

the plaintiff, and (3) the costs of the action.

15 U.S.C. § 1117(a).

51a

Appendix A

thought this cause of action should be dismissed for several

reasons we’ve already rejected (lack of commercial use,

lack of Lexmark statutory standing) but also for two

independent reasons: (1) a failure to plead “commercial

advertising” and “commercial speech” and (2) a failure to

plead a false and misleading statement “beyond the use of

the mark.” Clemente Props., 693 F. Supp. 3d at 245–46.

Appellants’ briefs address the latter reason and

explain why they believe the district court made the

wrong call. They point to allegations in their complaint

that accused the government of making false and

misleading statements “in the laws, in the license plates

and registration labels, in the document of permit for

motor vehicles, to the press, and so on,” statements

that “misled the public to believe that the Clementes

endorsed the charges for the trademark in license plates

and registration labels, and the new sports district.” But

that said, appellants do not make any serious attempt

to address the district court’s first independent reason

for finding the claim insufficiently pled: they never

point out facts in their complaint suggesting that the

Commonwealth Defendants’ statements appeared in

commercial advertisements or constituted commercial

speech as required for a false advertising claim. While

the district court offered little explanation of why it

concluded that there was no commercial advertisement,

it clearly stated that the element of “commercial speech”

was missing. See Clemente Props., 693 F. Supp. 3d at

245–46. Combined with the Commonwealth Defendants’

motion to dismiss, that should have given appellants some

indication of the issues in dispute, or at the very least, the

relevant test to apply.

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Appendix A

Yet appellants do not address the test for commercial

advertising or promotion in a way that explains why they

believe their complaint passes muster. Cf. Podiatrist

Ass’n v. La Cruz Azul De P.R., Inc., 332 F.3d 6, 19 (1st

Cir. 2003) (providing a four-part test for commercial

advertising or promotion). 28 At best, appellants assert

that the Commonwealth used “methods that communicate

information to the public” and point us towards the

classification of certain items in the USPTO Trademark

ID Manual as within a class for “[a]dvertising and

business.” These arguments, if they amount to anything,

do little to address the stated basis for the district court’s

ruling: that the Commonwealth’s use of Clemente’s name

and image don’t constitute commercial speech. See Ariix,

28. Despite binding precedent in the form of Podiatrist

Association, appellants insist in a footnote that “there are no legal

bases for the supposed requirements” of commercial advertising

or promotion and intention to influence potential customers.

Based on what was argued below, appellants seem to think that

Lexmark overruled any cases regarding commercial advertising

or promotion. But the Supreme Court declined to address that

element of a false advertising claim in Lexmark. See 572 U.S. at

123 n.1. At most, it appears Lexmark may have abrogated any

requirement that the defendant be a competitor of the plaintiffs.

See Ariix, LLC v. NutriSearch Corp., 985 F.3d 1107, 1120 (9th

Cir. 2021) (recognizing that Lexmark “likely abrogated” any

requirement of competition); Strauss v. Angie’s List, Inc., 951

F.3d 1263, 1268 n.5 (10th Cir. 2020) (holding that Lexmark had

no impact on the commercial advertising or promotion analysis,

but noting that other circuits had “discard[ed]” the competition

requirement). Because the argument has not been properly

presented to us on appeal, we take no position on Lexmark’s

impact.

53a

Appendix A

LLC v. NutriSearch Corp., 985 F.3d 1107, 1115–18 (9th

Cir. 2021) (considering whether the defendant’s publication

constituted commercial speech in a multi-factor analysis

of whether the speech “does no more than propose a

commercial transaction” (quoting United States v. United

Foods, Inc., 533 U.S. 405, 409, 121 S. Ct. 2334, 150 L. Ed. 2d

438 (2001))); cf. Rocket Learning, Inc. v. Rivera-Sánchez,

715 F.3d 1, 13 (1st Cir. 2013) (defining commercial speech

as “expression related solely to the economic interests of

the speaker and its audience” (cleaned up)). We thus deem

the matter waived. See Cardona-Martinez v. RodriguezQuinones, 444 F.3d 25, 29 (1st Cir. 2006); United States

v. Zannino, 895 F.2d 1, 17 (1st Cir. 1990). Accordingly, we

affirm the district court’s hol

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