Trademarks

When a Mark Is Used 'As a Mark': Punchbowl v. AJ Press and the Shrinking Reach of Rogers

The Ninth Circuit reversed itself after Jack Daniel's, holding that Rogers cannot shield a name used as a source identifier and sending the dispute back for an ordinary likelihood-of-confusion analysis.

April 19, 2026
Two business nameplates bearing identical wording side by side
When competitors share a common English word as a brand name, the confusion analysis—not the First Amendment—does the work. Shutterstock
Educational content, not legal advice. This article explains general legal concepts. It does not create an attorney–client relationship. For your specific situation, consult a licensed attorney.

In Punchbowl, Inc. v. AJ Press, LLC, No. 21-55881 (9th Cir. Jan. 12, 2024), the United States Court of Appeals for the Ninth Circuit did something appellate panels rarely do: it reversed a conclusion it had reached in the very same case. Writing for the panel, Circuit Judge Daniel A. Bress withdrew the court’s earlier 2022 opinion and held that the threshold First Amendment screen known as the Rogers test no longer applied to AJ Press’s use of the “Punchbowl” name. The reason was a Supreme Court decision handed down between the two rulings—Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023)—which sharply narrowed Rogers and pulled the case back into the ordinary machinery of trademark law. The panel reversed and remanded, instructing the district court to evaluate the dispute under the conventional likelihood-of-confusion standard.

At a glance

  • Case: Punchbowl, Inc. v. AJ Press, LLC, No. 21-55881 (9th Cir. Jan. 12, 2024) (Bress, J.).
  • Posture: The Central District of California had ruled for AJ Press; the Ninth Circuit affirmed in November 2022 under the Rogers test; after Jack Daniel’s, the panel withdrew that opinion, reversed, and remanded.
  • Holding: Rogers does not apply when an accused infringer uses the challenged term “as a mark”—that is, as a source identifier for its own goods or services. AJ Press used “Punchbowl” to brand its publication, so the case proceeds under ordinary trademark analysis.
  • No carve-out for common words or expression: That “punchbowl” is an everyday English word, and that Punchbowl News is expressive journalism, does not exempt the use from the rule. Those features instead bear on likelihood of confusion.
  • Why it matters: The opinion is one of the first appellate applications of Jack Daniel’s and a roadmap for how the Ninth Circuit will route expressive-but-source-identifying uses back into the multifactor confusion test.

The underlying facts are tidy. Punchbowl, Inc. is a technology company that has sold online invitations and digital greeting cards under the PUNCHBOWL mark since roughly 2006, with a federal registration dating to 2013. In 2021, journalists Anna Palmer and Jake Sherman launched Punchbowl News, a subscription publication covering Capitol Hill—newsletters, podcasts, and video aimed at political insiders. Punchbowl, Inc. sued for trademark infringement. The district court entered judgment for AJ Press, and the Ninth Circuit first affirmed on the ground that the news organization’s use was expressive and therefore protected by Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Then the Supreme Court spoke.

How Jack Daniel’s reset the screen

Rogers originated as a tool for balancing the Lanham Act against the First Amendment when a trademark appears in the content of an expressive work—the title of a film, the lyric of a song, the name of a fictional product. Under it, the use is protected unless it has no artistic relevance to the work or, if it does, explicitly misleads as to source. For years, courts treated Rogers as a gateway: clear it, and the plaintiff never reached the likelihood-of-confusion factors at all.

Jack Daniel’s curtailed that gateway. The Supreme Court held that Rogers “does not apply when the challenged use of a mark is as a mark”—that is, when “the accused infringer has used a trademark to designate the source of its own goods.” Such use “falls within the heartland of trademark law, and does not receive special First Amendment protection.” The dog-toy maker in that case had used “Bad Spaniels” and a parodic version of the Jack Daniel’s bottle to identify and sell its own product, not merely to comment on the whiskey brand. That made the threshold screen unavailable and returned the case to the ordinary infringement inquiry.

The Punchbowl panel read that holding as dispositive of its earlier analysis. AJ Press did not invoke “Punchbowl” inside an expressive work the way a novelist might name a character; it adopted “Punchbowl News” as the brand of its publication—precisely the source-identifying use that Jack Daniel’s says falls outside Rogers. The court therefore could not affirm on the basis it had used before. As Judge Bress framed it, the threshold question is functional: is the defendant using the term to identify and distinguish its own offering? If so, Rogers drops out and the Lanham Act’s standard test governs.

No exception for common words—or for parody

Punchbowl News pressed two arguments to keep itself within Rogers. First, it urged that “punchbowl” is a common English word with independent meaning, so trademark law should tread lightly. Second, it leaned on its expressive, journalistic character. The panel rejected both as reasons to bypass the confusion analysis. The court reasoned that the Supreme Court had created no exception for parody in Jack Daniel’s, and there was no principled basis to carve out one for common words used as marks. The dispositive fact is the manner of use, not the etymology of the term or the expressive flavor of the product.

Critically, the panel did not treat those features as irrelevant—only as misplaced. The commonness of the word and the expressive nature of the use, the court explained, are “certainly” relevant, but they belong inside the likelihood-of-confusion calculus rather than at a First Amendment gate. The court signaled where that calculus likely points: “When companies operating in different spaces use the same common words as trademarks with different expressive connotations, it reduces the likelihood of confusion.” That observation foreshadowed a defense-friendly remand even as it withdrew the defendant’s threshold shield.

The multifactor test on remand

In the Ninth Circuit, likelihood of confusion is governed by the eight Sleekcraft factors, drawn from AMF Inc. v. Sleekcraft Boats (9th Cir. 1979): strength of the mark, proximity or relatedness of the goods, similarity of the marks, evidence of actual confusion, marketing channels used, the degree of consumer care, the defendant’s intent, and the likelihood of expansion into other markets. The framework is the West Coast cousin of the DuPont factors that govern registration disputes before the Trademark Trial and Appeal Board; both ask the same practical question—whether ordinary consumers are likely to be confused about source, sponsorship, or affiliation.

On remand, the Central District of California (Judge Stephen V. Wilson) granted summary judgment of no infringement to AJ Press in August 2024, finding against Punchbowl, Inc. on nearly every factor. The court concluded that although the marks were identical when shortened to “PUNCHBOWL,” they were presented in visually distinct ways and diverged when spelled out in full; that the parties served different audiences in different contexts (online party invitations versus Beltway political journalism); and that the scattered instances of inquiry were not legally cognizable actual confusion. The remand thus vindicated the panel’s prediction: stripped of the Rogers shortcut, the defendant still prevailed—but through the confusion factors, exactly where the appellate court said the analysis belonged.

Open questions

  • What counts as “use as a mark” at the margins? The line is clean when a defendant brands its own product. It is murkier where a term operates simultaneously as commentary and as a brand—merchandise, satirical media, or social-media handles that both express and identify.
  • Does the pleading stage do real work? The panel suggested a court could sometimes resolve confusion early. But the multifactor test is fact-intensive, and most defendants will now litigate confusion through summary judgment rather than win on a motion to dismiss.
  • How will sister circuits align? Jack Daniel’s narrowed Rogers nationally, but the contours of “expressive use that is not source-identifying” will be worked out circuit by circuit.

Implications

  • The threshold defense is narrower. Defendants who adopt a contested term as their own brand can no longer expect Rogers to short-circuit the case; expect more disputes to reach the Sleekcraft/DuPont factors.
  • Common-word and expressive arguments survive—relocated. Those points remain powerful, but as confusion arguments (different markets, different connotations, sophisticated buyers), not First Amendment trump cards.
  • Clearance still matters for media and tech brands. Publications, apps, and platforms choosing an everyday-word name should assume ordinary infringement scrutiny, especially against a registered mark in an adjacent space.
  • Outcome is not foreordained by the threshold ruling. Losing the Rogers screen is not losing the case; Punchbowl itself ended in a defense win on confusion.

Frequently asked questions

Did the Ninth Circuit find that Punchbowl News infringed? No. It held only that the Rogers test did not apply and remanded for an ordinary likelihood-of-confusion analysis. On remand, the district court granted summary judgment of no infringement to AJ Press.

What is the “use as a mark” rule from Jack Daniel’s? When a defendant uses the contested term to identify and distinguish its own goods or services—rather than merely within the expressive content of a work—the special First Amendment screen of Rogers does not apply, and the case proceeds under standard trademark law.

Does it matter that “punchbowl” is a common English word? Not for the threshold question. The court refused to exempt common words from the rule. The commonness of the term is instead weighed within the likelihood-of-confusion factors, where it tends to reduce confusion between firms in different markets.

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