HomeVestors opinion shows that, post-JDI, Rogers v. Grimaldi can't give security to titles

HomeVestors of America, Inc. v. Warner Bros. Discovery, Inc., 2025 WL 2301911, No. 22-1583-RGA (D. Del. Aug. 8, 2025)

Rogers v. Grimaldi no longer provides a path to early dismissal for many expressive uses in titles. For titles, it might be an affirmative defense, though even there the path seems rather narrow.

HomeVestors, which has registrations for THE UGLIEST HOUSE OF THE YEAR, WE BUY UGLY HOUSES, and UGLY HOUSE?, and uses THE UGLIEST HOUSE OF THE YEAR in connection with a yearly home renovation contest for its franchisees, sued defendant WBD for its TV show, “Ugliest House in America.”

The court held that the Rogers defense required a trial on whether the use was source-identifying. HomeVestors argued that Ugliest House in America must be source-identifying because it is the title of a television series, because WBD and its production company have characterized it as source-identifying in contracts with each other and with the host of the show, and because the titles of many of WBD’s other television shows are registered trademarks. WBD argued that none of those things were legally relevant, and that it presented unrebutted evidence—survey data—indicating that the public does not associate Ugliest House in America with HGTV or WBD.

The court found a material factual dispute on use as a mark.

Specifically, HomeVestors alleges that the marks are similar (how does this bear on trademark use by WBD?), that both parties run a contest related to ugliest homes (how does this bear on trademark use by WBD?), that internet searches for HomeVestors’ marks return results for WBD’s show (how does this bear on trademark use by WBD?), that promotional materials for the show emphasize the words in common with HomeVestors’ marks (at least plausibly relevant to whether WBD is making trademark use), that WBD, either itself or through its agent, initially sought to take advantage of consumer recognition of HomeVestors’ brand for casting purposes (maybe relevant), and that WBD is actively competing with HomeVestors franchisees for houses and homeowners (ditto).

But how are these things to be weighed against the survey evidence or the principle “TV show titles are trademarks”? The court says: “Where, as here, a program’s title plainly describes its subject matter, a reasonable fact-finder could conclude that the title is not source-identifying” (citing Down to Earth Organics, LLC v. Efron, 2024 WL 1376532, at *4 (S.D.N.Y. Mar. 31, 2024) (concluding at the pleading stage that the program title “Down to Earth with Zac Efron” merely “identif[ied] the subject matter and tone of the [s]eries” and was therefore subject to the Rogers test)). WBD also offered evidence that it chose the title Ugliest House in America solely for its descriptive value, along with survey evidence suggesting that “consumers do not associate the title ‘Ugliest House in America’ with a specific source.” 

The well-recognized problems with trademark use inquiries—necessary as they may be—are on full display here, especially since “use to describe the nature of the show” gives people reasons to watch the show or participate in the show. That is, descriptive use can promote the show! Thus it is very difficult to disentangle from “trademark use.”

The same reasons prevented summary judgment on descriptive fair use.

The court also rejected WBD’s trademark misuse/unclean hands defense, because asserting trademark rights, even if unjustifiably, doesn’t constitute misuse or unclean hands.

Confusion: There was a genuine dispute because there was “some visual similarity, including the emphasis on UGLIEST HOUSE,” and similarity is the most important factor. 

HomeVestors mark

WBD ads

In addition, there was evidence that could be actual confusion evidence, though WBD disputed its meaning. Specifically, HomeVestors argued that the National Association of Realtors confused the names of WBD’s show and HomeVestors’ contest” and that “one of HomeVestors’ own marketing vendors confused the names of WBD’s show and HomeVestors’ contest.”

Finally, intent was disputed, because “WBD’s predecessor entity published an article on HGTV’s website ... discuss[ing] HomeVestors and its famous ‘We Buy Ugly Houses’ billboards[,]” and that “[i]n November 2020, the title clearance report provided by [the production company WBD hired] to WBD—before the show premiered—identifies HomeVestors UGLY HOUSES marks.” Although knowledge of the mark alone is insufficient, the fact that WBD’s production company explored a collaboration with HomeVestors “could plausibly suggest that WBD sought to trade on HomeVestors’ goodwill.”

Even though there’s no way HomeVestors’ marks are household names among the general consuming public, the court also denied summary judgment on dilution, holding that the parties just repeated their arguments on confusion.  

The court also left disgorgement for trial (that bench trial has now occurred) as well as objections to proposed expert testimony. Issues of intent and delay were contested for disgorgement. For the expert testimony, I noted WBD’s objection to testimony that the houses featured on UHIA would make for good HomeVestors purchases, and thus that the parties compete. WBD argued, in my view correctly, that (in this specific context) this claim wasn’t relevant to the issue of confusion. “[W]hether the parties compete at all might be probative of whether they compete in the minds of consumers.” In the TV show v. home flipper situation, though, whether the houses were actually suitable for both parties’ purposes doesn’t seem connected to whether reasonable consumers would think that HomeVestors operates or endorses a TV show.