The Ninth Circuit recently noted in Punchbowl, Inc. v. AJ Press, LLC, that “not ‘every infringement case involving a source-identifying use requires full-scale litigation' and that some cases can be resolved at the Rule 12(b)(6) stage.” Punchbowl, Inc. v. AJ Press, LLC, No. 21-55881, 90 F.3d 1022 (9th Cir. Jan. 12, 2024) (quoting Jack Daniel's Props., Inc. v. VIP Prods. LLC, 599 U.S. 140, 157 n.2 143 S. Ct. 1578, 216 L.Ed.2d 161 (2023)). Involving the use of “Punchbowl News” for an online political news service that was accused of infringing the plaintiff's PUNCHBOWL mark for online greeting cards, the Ninth Circuit noted that “[w]hen companies operating in different spaces use the same common words as trademarks with different expressive connotations, it reduces the likelihood of confusion.” The case was remanded to the district court to proceed with a likelihood-of-confusion analysis, perhaps on summary judgment.

On remand, the district court has now granted summary judgment of no infringement. Punchbowl, Inc. v. AJ Press LLC, 2:21-cv-03010-SVW-MAR (C.D. Cal. Aug. 22, 2024). 

The district court found that PUNCHBOWL was "suggestive" for invitation services and only entitled to "weak protection"; but the similarity of the marks slightly favors finding a likelihood of confusion. More importantly, the court found that the goods and services being offered were not related or proximate (that is, not complimentary, not sold to the same class of purchasers, nor similar in use and function), which strongly weighed against finding a likelihood of confusion. To the extent that some consumers would use a PUNCHBOWL invitation for a political purposes, it "does not convert its service into a political service."

For example, the use of disposible cups at a political campaign rally does not mean that the producer of those cups operates a political business.

Futhermore, eveidence that "43 of Plaintiff's customers from 2019-2024 organized their own politically themed events" (out of over 150 million digital invitations and greeting cards) was "de minimis."

With respect to the class of purchasers, the court noted that "Plaintiff's customers are mostly women, while Defendant's customers are mostly men" and found that "the parties' services appeal to different types of consumers acting as agents of consumption in different contexts." 

No one who sets out to buy party planning services will have their attempted purchase converted into a subscription to a news publication focused on political insiders, even if those individuals seeking to plan a party have a separate interest in political news.

The court also found a hundred examples of misdirected inquiries between "Punchbowl" and "Punchbowl News," out of tens of thousands of queries, were "de minimis" and did not show actual confusion. 

100 instances of confusion carry little weight when properly contextualized against the number of support inquiries that the parties receive annually. . . . Out of thousands of communications, only approximately 100 were misdirected; that amount is insignificant.

Furthermore, "Plaintiff has not identified a single customer who purchased (or came close to purchasing) the wrong product as a result of confusion between the parties' services." As noted by Professor Tushnet, "relevant confusion has to relate to some kind of purchase opportunity. Otherwise, trademark would turn into a right in gross." 

Ultimately, the dissimilarity and lack of proximity between the services provided by Plaintiff and Defendant carry the day. This conclusion is the obvious one. At worst, some consumers might mistakenly contact one party when they mean to contact the other party. A misaddressed email, Facebook comment, or X post is a negligible friction that stems from the fact that both parties have named their services a common word. No reasonable consumer would purchase a subscription to a party planning software platform when they intended to subscribe to a news website (or vice versa) because they thought they came from the same source. 

The court concluded that no reasonable jury could find otherwise, and granted summary judgement of no trademark infringement, no false designation of origin, and no unfair competition.