Dueling genealogists: photo (c) claims allowed, but not Lanham Act or factual compilation claims

Hein v. Mai, 2026 WL 44798, No. 24-01126-JWB (D. Kan. Jan. 7, 2026)

Some interesting stuff going on in the genealogy world!

The Volga German people are individuals of German origin who moved to the Volga region of Russia in the eighteenth century. … There is a sizable Volga German diaspora in the American Midwest. Plaintiff Margreatha Hein and Defendant Dr. Brent Mai are both genealogy researchers on the Volga German people. Their research is the subject of this lawsuit.

Hein operates volgagermans.org, where she publishes her research. Mai is the Dean of Libraries at Wichita State University, has held similar positions with other universities, and operates volgagermaninstitute.org, where he publishes his research.

Hein first objected to Mai’s copying in 2020; in 2023, she registered the copyright in eight photos she took in Europe that were republished on Mai’s website as early as 2017. (This removes her eligibility for statutory damages.) She also registered ten “textual compilations” and alleged that Mai copied 107 textual compilations from her website: paragraph form summaries of genealogical information, organized by last name.

The parties focused on a particular example, which plaintiff’s expert contended was representative; as plaintiff has the burden of proof of infringement, the court extended its finding of noninfringement to the other, unargued examples; plaintiff didn’t provide “any additional examples that vary in a significant way.”

Hein registered this text:

Johann Jacob Hessler (son of Johann Jacob Hessler of Niedergründau) was baptized on 15 December 1718. Anna Maria Meininger (daughter of Johannes Meininger of Mittelgründau) was baptized on 2 December 1725. Johann Jacob and Anna Maria married in Rothenbergen on 26 August 1745.

Baptisms were recorded for the following children, all born in Rothenbergen: Johann Conrad, born 5 February and baptized 12 February 1747 (died 30 April 1754); twin daughters born 28 May and baptized 29 May 1751, Anna Margaretha (died 16 May 1754) and Christina; Anna Margaretha born 22 May and baptized 25 May 1755; Elisabetha, born 24 January and baptized 26 January 1760 (died 27 Jan 1760); and twin sons born 5 February and baptized 7 Feb 1762, Valentin (died 5 Mar 1764) and Friedrich.

Jacob Hessler died on 8 Nov 1762. On 5 Jan 1764, Anna Maria Hessler (widow of Jacob Hessler) married Hartmann Ifland (son of Johannes Ifland from Lützelhausen) in Rothenbergen. They had a daughter Catharina, born 2 January and baptized 8 January 1765.

Hartmann, Anna Maria, and three of the Hessler children (Christina, Anna Margaretha, and Friedrich) arrived in Russia on 9 August 1766. Hartmann apparently died during the journey to the villages.

Mai admittedly copied; he listed Hein as a contributor or researcher. The parties’ research is “freely accessible to the public and neither party receives any income directly from the disputed material on their website.” Mai, however, on occasion receives income from leading tours of the Volga region or translating certain documents. Hein has stated she has no interest in similar business.

The court first allowed Dr. Kenneth Crews to testify as a copyright expert, but only about issues of fact (the process of getting a registration and possibly some facts related to fair use, though it’s harder to see how that would work), not ultimate legal issues.

Mai challenged Hein’s standing since she doesn’t seek to generate revenue, but she adequately alleged copyright infringement—which has a sufficient common law analogue—and reputational harm for the Lanham Act by listing her as a researcher/contributor and allegedly including inaccurate information.

Copyright limitations period: contested issue of facts precluded summary judgment for Mai given the discovery rule and the possibility that Mai engaged in new publications when he moved institutions/changed domain names. The court accepted Hein’s argument that she didn’t discover the “full scope” of the infringement until 2023 as sufficient to avoid summary judgment, though I’m not sure how persuasive that is given the 2020 objections.

Copyright in the form compilations of historical genealogical information: This claim failed because Mai did not copy anything copyrightable. The court’s north star was the Supreme Court’s admonition that “the selection and arrangement of facts cannot be so mechanical or routine as to require no creativity whatsoever.” Still, there might be a valid copyright in Hein’s compilations. But even with a triable issue on that, infringement claims failed.

Stripping each entry of uncopyrightable facts/asserted facts, what remained was a mechanical “skeleton.” An abstraction-filtration-comparison approach was useful here given the thinness of the copyright. The sample Hessler text was “composed almost entirely of facts (names, dates, and locations) that are not subject to copyright protection.” Without the facts, here was the selection/coordination/arrangement:

_____________ (son of _____________of _____________) was baptized on _____________. _____________ (daughter of _____________ of _____________) was baptized on _____________. _____________and _____________married in _____________on _____________. … etc.

Mai’s version:

Johann Jacob Hessler, son of Johann Jacob Hessler of Niedergründau, was baptized on 15 December 1718. Anna Maria Meininger, daughter of Johannes Meininger of Mittelgründau, was baptized on 2 December 1725, Johann Jacob and Anna Maria were married Rothenbergen on 26, August 1745.

The Gründau parish register records the baptisms of the following children of Johann Jacob & Anna Maria Hessler, each born in Rothenbergen: (1) Johann Conrad, born 5 February 1747, baptized 12 February 1747, died 30 April 1754; (2 & 3) twins Anna Margaretha (who died 16 May 1754) & Christina, born 28 May 1751, baptized 29 May 1751; (4) Anna Margaretha, born 22 May 1755, baptized 25 May 1755; (5) Elisabetha, born 24 January 1760, baptized 26 January 1760, died 27 January 1760; and (6 & 7) twins Valentin (who died 5 March 1764) & Friedrich, born 5 February 1762, baptized 7 February 1762.

Johann Jacob Hessler died 8 November 1762, and his widow remarried on 5 January 1764 to Hartmann Ifland. They had a daughter Catharina, born 2 January 1765 and baptized 8 January 1765.

The Ifland family, along with 3 of the Hessler children, arrived from Lübeck at the port of Oranienbaum on 9 August 1766 aboard the pink Slon under the command of Lieutenant Sergey Panov.

“While Mai’s reproduction certainly contains the same basic information as Ms. Hein’s skeleton above, it can hardly be said to be a copy of copyrightable content. Basic sentences, which at least in this example Mai does not copy verbatim, and words like ‘baptism’ or ‘born’ which appear throughout, do not possess the ‘creative spark’ required to demonstrate copyright protection.”

What about the “mode of presentation”? “Because Ms. Hein chooses the humble paragraph format to present her information, she argues that Dr. Mai should not have been able to do so. But this argument proves too much. Copyright law cannot grant the first researcher who discovered and published a compilation of facts with little additional synthesis a monopoly over the mode of presentation of that information.” All the other examples Hein submitted were substantially similar; summary judgment for Mai was appropriate.

That left the photos, as to which the court denied Mai’s motion for summary judgment on fair use. (This is also framed as a finding of no fair use, but it seems like it’s still available for trial.)

Purpose and character: Mai “primarily” argued noncommerciality, not transformativeness, which probably makes sense.  “While the court agrees that Dr. Mai’s use is on its face non-commercial, there is at least a question of fact as to whether the photographs contribute to Dr. Mai’s other sources of income, such as his tours or translations.”

Nature of the work: photos are creative. (Sigh; no mention of publication status or free availability elsewhere, though that shouldn’t necessarily outweigh creativity—but not all photos are the same!)

Amount and substantiality: eight whole photos.

Market value: Because Hein has no interest in monetization of the website or through tours and translations, “there can be no effect on the market.” However, “the fair market value could at some future date be affected should Ms. Hein ever decide to monetize her work.” Summary judgment denied. Mai’s pyrrhic victory on factor four is probably matched by Hein’s overall pyrrhic victory, given that statutory damages and attorneys’ fees are unavailable.

Lanham Act/state law unfair competition claims: Hein argued that the use of her name, with the title “researcher” or “contributor” placed next to it, diminished her stature in her research field and falsely indicated she has a professional association with Mai. Mai argued that Hein wrongly tried to create a “required citation format” through federal law, highlighting “apparently conflicting complaints that Dr. Mai does not give Ms. Hein credit but also diminishes her when he cites her.” (This is Dastar’s concern, too.)

The court didn’t have to reach the issue because it found that the Lanham Act and state law claims didn’t cover noncommercial uses. “The court’s survey of Lanham Act case law confirms a commerciality requirement.” (Citing Lexmark and its progeny—this requires the plaintiff to suffer a commercial injury and is different from requiring the defendant to be commercial.)

Although Hein alleged that the use of her name enabled Mai to receive income from selling tours and translations on a different page of his website, that wasn’t enough; it was simply “too attenuated,” given that Mai’s website was “overwhelmingly noncommercial in nature,” despite its link to another website with information about his tours. Even more attenuated were other alleged commercial connections:  Mai’s “paying for a URL and copyright registrations, having a bank account, and spending substantial sums on hard copy research materials, subscription websites, technical support for a website, and travel for research and to attend conferences.” Thus, Mai wasn’t using Hein’s name “in commerce.”   

false advertising's injury requirement causes reverse passing off claim to fail

Kesters Merchandising Display International, Inc. v. SurfaceQuest, Inc., --- F.4th ----, 2026 WL 35198, No. 24-3112 (10th Cir. Jan. 6, 2026)

SurfaceQuest allegedly marketed its products with photographs of its competitor Kesters’ competing product. Kesters sells “a lightweight, seamless material used in architectural products” called MicroLite, while SurfaceQuest mainly sells “architectural film that goes on surfaces like MicroLite.” Indeed, around 2014, the parties jointly marketed MicroLite samples wrapped in SurfaceQuest film. In connection with that, Kesters supplied SurfaceQuest with products, specification guides, and photographs of Kesters’ products. SurfaceQuest then applied its film to the products.

However, two years later, “SurfaceQuest decided to sell and market its own lightweight beam wrapped in SurfaceQuest film. These marketing efforts included advertisements using photographs of MicroLite.” Kesters alleged that SurfaceQuest “published a video characterizing MicroLite as SurfaceQuest’s product,” “published images from a grocery store renovation and misrepresented them as depicting SurfaceQuest products,” “placed a SurfaceQuest sticker on a MicroLite binder and falsely represented to a Kesters customer that SurfaceQuest had manufactured MicroLite,” “put a SurfaceQuest sticker on a MicroLite sample and falsely told Kesters customers that SurfaceQuest had invented MicroLite,” and “allowed a SurfaceQuest dealer to advertise with an image of MicroLite.”

Kesters lost its Lanham Act claim because “injury isn’t presumed and the plaintiff has not presented evidence of an actual injury.”

Kesters had the burden of showing injury: either a direct diversion of sales or a loss of goodwill. The court of appeals reasoned that a presumption of injury exists when the plaintiff proves material falsity and the “plaintiff and defendant are the only two significant participants in a market or submarket.” But, even presuming literal falsity, Kesters failed to create a genuine dispute of material fact regarding the presence of a limited market.

“[A] market is sparsely populated only when the other participants are insignificant. Otherwise, the court can’t assume that the plaintiff’s lost sales would go to the defendant.”  SurfaceQuest showed the existence of multiple competitors. Kesters had a competing affidavit, but it only offered it in support of its own summary judgment motion, not in opposition to SurfaceQuest’s summary judgment motion, and it only offered the affidavit too late—in a reply brief.

Dipping its toes into antitrust reasoning (always a dangerous move), the court of appeals reasoned that even considering the affidavit wouldn’t have helped. “To determine the scope of the market, we examine ‘cross-elasticity of demand,’ which measures the substitutability of products.” The affidavit didn’t address cross-elasticity of demand, only similarities between the products made by Kesters and SurfaceQuest. “But these similarities didn’t necessarily affect the ability to substitute products,” and “a single market may include companies making dissimilar products.”

Evidence of actual injury was also insufficient. Kesters argued that it lost a bid for work on a grocery store’s health markets, but there was no evidence that SurfaceQuest obtained those projects or that the store had seen SurfaceQuest’s marketing materials, whether directly from SurfaceQuest or otherwise. Thus, the district court couldn’t reasonably infer a causal connection between SurfaceQuest’s false advertising and Kesters’ loss of the bid.

laches, once established, bars Lanham Act claims even during more recent periods

Design Gaps, Inc. v. Distinctive Design & Construction LLC, --- F.4th ----, 2025 WL 3492373, No. 24-1860 (Dec. 5, 2025)

Super complicated facts; I’ll try to focus on the Lanham Act laches part because of that. “[A]fter a squabble developed over a cabinet and closet job for a luxury home in Charleston, South Carolina, the parties went to arbitration. The arbitration turned out well for the homeowners and the general contractor overseeing the home renovations but badly for the cabinet maker.” The cabinet maker nonetheless sued in federal court, including suing people that the arbitrator had held could not be brought into the arbitration because they weren’t bound by the agreement. The court of appeals nonetheless found that, because the disallowed parties were in privity with entities validly in the arbitration, res judicata and collateral estoppel precluded any claims against them based on the job.

Design Gaps “designs and installs cabinetry in luxury homes,” and frequently worked with defendant Shelter, “a general contractor engaged in homebuilding and renovation.” They had disputes during their years of working together. “For example, Design Gaps claimed from time to time that Shelter advertised Design Gaps’ cabinets without attributing the work to Design Gaps.” These claims were not covered by the arbitration, but they were still barred by laches.

The parties accepted that South Carolina’s three-year statutes of limitations for fraud and unfair trade practices supplied the analogous limitations period. Design Gaps filed its lawsuit on January 13, 2023, meaning that any alleged Lanham Act violations occurring before January 2020 presumptively were barred by laches.

Design Gaps argued that it did not have sufficient information concerning Shelter’s violations until arbitration commenced. But it sent a C&D in April 2018 about Shelter’s unattributed uses of Design Gaps’ work specifically referencing the Lanham Act in connection with its failure-to-attribute objections. While “mere knowledge that [a trademark owner] might have an infringement claim at some future date is not sufficient to trigger the period of unreasonable delay required for estoppel by laches,” the inquiry is objective. And the objective evidence was that “Design Gaps knew Shelter was using Design Gaps’ cabinet work in its promotional materials and that Shelter was not attributing that work to Design Gaps. Design Gaps had also stated in writing that it believed such conduct was false and misleading as to the origin of the cabinet work and that Design Gaps was being harmed. These facts are virtually identical to those alleged to support Design Gaps’ Lanham Act claims in this lawsuit.”

Would laches also cover continuing the same conduct during the presumptively not-lached period? Yes. Here, the core “claim” remained the same, so the continuing violation doctrine extended laches to the more recent period.

Design Gaps argued that its delay was excusable based on Citibank, N.A. v. Citibanc Group, Inc., 724 F.2d 1540 (11th Cir. 1984); there, Citibank should have known of the defendants’ use of its name “prior to 1960, but did not file suit until 1979.” “When [Citibank] first learned of defendants’ adoption of Citibanc as the name of its holding company in 1972, [Citibank] wrote letters warning that it regarded the use of” the name “as an infringement of [Citibank]’s rights.” But, unlike Citibank, Design Gaps did not “sen[d] several other letters over the next few years” before bringing suit. Moreover, in Citibank, the defendants did “not rel[y] on the delay of plaintiffs in expanding their use of the mark; indeed, they [ ] expanded their use while asserting their right to do so, in the face of plaintiff’s constant complaints.” By contrast, the record here didn’t indicate that Shelter asserted its belief that it had the right to promote its work in the way it did to Design Gaps.

Design Gaps also argued that settlement discussions excused its delay, but the record didn’t support the existence of discussions, only that Shelter didn't respond to the letter.

Design Gaps also argued that there was no prejudice. Prejudice can be economic or evidentiary. For trademark, a defendant’s “assertion that it would suffer economic injury if enjoined from using” a plaintiff’s mark, “without reference to any evidence beyond the length of time it has used the mark, is simply insufficient to establish economic prejudice.” In another false advertising case, the Fourth Circuit found that “unreasonable delay prejudiced” the defendant “because of [the defendant]’s continued use of the advertisement on all of its [products] in over a dozen retail stores for years,” to the point that the plaintiff alleged that the defendant “ha[d] been unjustly enriched by over $27 million.” The record didn’t show that much here, but Shelter “demonstrated its continued economic investment in promotional materials between 2015 and 2022.”

For evidentiary prejudice, a defendant must “articulate how” intervening time “would prejudice [its] defense specifically.” Indeed, a defendant “ha[s] an obligation to adduce specific evidence of prejudice” to use this type of laches. Shelter relied on the death of a Mr. Butler, one of its principals, who communicated with Design Gaps about the challenged conduct. Design Gaps argued that it served interrogatories and requests for production on Mr. Butler ten weeks before his unexpected death and that Shelter’s refusal to answer discovery and deficient responses created the prejudice Shelter claims to have suffered. “Design Gaps has not supported this argument with citation to the record. Besides, written discovery responses are no substitute for live testimony. Any responsibility for discovery issues does not change the fact that Shelter has demonstrated some evidentiary prejudice. When considered in the context of over four years of unreasonable delay, we conclude that Shelter has carried its burden.” (Not entirely sure why it’s Shelter’s burden given the presumption of laches, but ok.)

what particularity is required when an ad campaign has zillions of possibly algorithmic variants?

Ledesma v. Hismile, Inc., --- F.Supp.3d ----, 2025 WL 3785960, No. 24-cv-03626-KAW (N.D. Cal. Sept. 23, 2025)

Blogging because it’s one of the first cases I’ve seen that has to address questions raised by algorithmically modified ads that are different for different users. Hismile allegedly engaged in fraudulent marketing of its teeth whitening products, “which promise to deliver instant and dramatic results.” Plaintiffs brought the usual California claims. The judge grants the motion to dismiss, with leave to amend (except as to a nationwide class for breach of warranty/unjust enrichment, which is out for good).

Hismile allegedly advertises its products through social media, particularly on TikTok, Instagram, and Facebook, with falsified before-and-after images, misleading celebrity endorsements, deceptive/undisclosed influencer marketing, and “customer reviews” by its own employees.

For example, ads for one product allegedly show the product’s purple serum while it is still on the models’ teeth, giving an illusion that the purple serum cancels out the yellow tones (consistent with their advertising focusing on “color correction” and the “color wheel”), but “fully rinsing off the product causes the color-correcting effect to disappear entirely.” They also allegedly used unnaturally bright lighting and models who already have very white teeth to exaggerate the before-and-after effect of another product. Celebrities paid to endorse allegedly already have very white teeth and are not bona fide users. They also allegedly made false claims of clinical proof, in contradiction to the science indicating minimal effectiveness.

Hismile’s primary argument was that plaintiffs failed to identify the specific ads they saw sufficient to satisfy Rule 9(b). (I’m not convinced that Rule 9(b) should apply to false advertising statutory claims, which were designed to change all the key elements of common-law fraud, but most courts routinely apply it.) The court agreed, but indicated its willingness to accept a somewhat more detailed pleading.

Plaintiffs argued that it was enough to describe their experiences and provide example ads. E.g., plaintiff Tanaka “relied on before-and-after images and videos on Defendants’ Instagram and TikTok, customer reviews, and customer reactions on Defendants’ website and on social media.”  It’s true that “courts have found that pleadings are insufficient where the complaint included a number of representative advertisements, but it was unclear which specific advertisement the plaintiff had seen and relied upon in making their purchase. Likewise, courts have often found it insufficient to simply point to a particular misleading and fraudulent statement or phrase that appeared in various advertisements. Courts have also found it insufficient to merely provide representative advertisements without stating that those were the same advertisements that the plaintiffs saw and relied upon.”

However, plaintiffs argued that they alleged exposure to a long-term advertising campaign, allowing their claims to proceed under In re Tobacco II Cases, 46 Cal. 4th 298 (2009), which stated that when “a plaintiff alleges exposure to a long-term advertising campaign, the plaintiff is not required to plead with an unrealistic degree of specificity that the plaintiff relied on particular advertisements or statements.” The circumstances of the advertising campaign may make it “impossible” to identify the specific advertisement that persuaded an individual to purchase a product.

The court reasoned that “this appears to be a case where Plaintiffs could potentially allege a pervasive, targeted advertising campaign over a period of time, all of which pushes the same message: that Defendants’ products will ‘instantly and dramatically whiten’ teeth.” They alleged a multi-million dollar advertising campaign on social media; they also alleged posts of fifteen or more advertisements per day. One plaintiff alleged seeing approximately sixty advertisements before deciding to purchase the products; requiring a plaintiff to “specifically identify each and every one of these sixty advertisements hardly seems practical or practicable.”

This is especially true for modern social media advertising. At the hearing (not in the pleadings, which is key), plaintiffs noted that the ads include a “seemingly infinite variations of what the ads can look like,” with multiple ads including the same video but in different orders. “One video may include the yellow rubber duck clip followed by a scientist clip, while another video may have the scientist clip come first followed by the yellow rubber duck clip or a yellow banana clip. In short, the same yellow rubber duck clip may be in hundreds of different of ads, making it difficult to identify which advertisement an individual may have seen.” The realities of social media exposure to “numerous 30-second or shorter advertisements, each of which may have focused on demonstrating that whitening worked through color-correction technology,” had to be taken into account.

Bottom line: “To find that Rule 9(b) requires a plaintiff to meet such a high standard would be the same as insulating a defendant from liability simply because they have created so many different types of advertisements that are then repeatedly pushed onto social media users. This would not be a fair result.”

However, the complaint wasn’t enough as currently pled. “Plaintiff must still plausibly allege that this is the type of advertising campaign that would not require them to identify the specific advertisements they viewed,” with allegations about its duration or their exposure; allegations about the strategy of using the same clip in multiple advertisements; and/or allegations that defendants’ social media accounts include thousands of false advertisements.  

Also, with respect to some categories of claims— “before or after videos, videos with scientists and dentists explaining color theory, and videos demonstrating color theory by wiping off purple paint from yellow objects”—there was more specific information, but some plaintiffs alleged that they relied on influencer endorsements without identifying who the influencer was and what was stated:

Significantly, Plaintiffs do not appear to allege that all influencer endorsements are false, such that every influencer endorsement would constitute false advertising. Likewise, some Plaintiffs relied on customer reviews, but do not specify who made these reviews or what they stated. Again, Plaintiffs do not allege that all positive reviews are fake, nor do they suggest that reviews from real customers would be actionable. To the extent Plaintiffs intend to rely on influencer endorsements or reviews, Plaintiffs will need to provide sufficient allegations to demonstrate that the endorsements or reviews they relied upon were false.

The court also commented, looking forward to an amended complaint, that claims of “instant” and “dramatic” whitening might well be non-actionable puffery; “[s]tatements that characterize the speed of an action with terms like ‘fast’ are frequently held to be puffery.”

literal falsity can exist without bald-faced lies, 9th Circuit confirms

InSinkErator, LLC v. Joneca Co., No. 25-286, 2025 WL 3751867, -- F4th -- (9th Cir. Dec. 29, 2025)

The court of appeals affirms the grant of a preliminary injunction, previously discussed, against Joneca’s advertising of its garbage disposals. InSinkErator argued that Joneca’s horsepower designations were literally false because they do not reflect the output power of the disposals’ motor, despite Joneca’s argument that its designations accurately reflect the electrical power drawn by its units.

“Joneca attributes its lower prices to various mechanical advantages, like its use of direct current and the torque of its smaller grinder turntable.” Horsepower is a unit of power; InSinkErator argued that consumers necessarily understand references to “horsepower” to mean “output horsepower”—the amount of power that a disposal’s motor can provide to the disposal’s grinding mechanism—as opposed to “input horsepower,” the electric power used by the system as a whole. The parties offered competing evidence, including expert declarations; Joneca argued that input power was used for rating disposal units under Underwriters Laboratories standard UL 430.

Was using input power ratings literally false in this context? The district court held that “[t]he advertisement unequivocally claims that a given machine has a specific horsepower, such as 1 HP, 1 1/4 HP, 3/4 HP, or 1/2 HP.” And it accepted a definition introduced by InSinkErator from a national retailer’s website that described horsepower for a disposal unit as “[t]he total power output capability from the included motor.” What about the UL guideline? It was “plainly a safety guide for ensuring that switches and controls can safely handle the input current drawn by a motor,” which provided for current input testing “regardless” of horsepower designations on the motor or accompanying packaging.

Procedural issue: what kind of review should the appellate court give to the district court’s finding of literal falsity by necessary implication? Joneca argued for de novo review to determine the meaning of the ad claims. The court of appeals declined to resolve the issue; even if ad claims should be construed de novo like contract terms, “subsidiary factual findings bearing on construction” are reviewed only for clear error. And those were the factual findings at issue here. The district court found that Joneca’s “input-based interpretation d[id] not seem reasonable.” When a court construes “technical words or phrases” by reference to “extrinsic evidence” about usage, that “factual determination, like all other factual determinations, must be reviewed for clear error.”

Joneca argued, nonetheless, that input horsepower “more closely correlates to the performance of the entire waste disposer system” as it would be used by a consumer. But that wasn’t clear error. “The district court considered battling expert opinions speaking to these questions alongside a wide range of supporting resources, including industry resources and a national retailer’s website.” (The district court also found particularly persuasive correspondence from UL engineers that “UL 430 is a safety standard for Waste Disposers and is not meant to be used to determine the horsepower ratings of Waste Disposers.” This might be hearsay, but hearsay can be considered on a preliminary injunction.)

It was not clear error to find that the horsepower claims weren’t ambiguous in context. The district court found Joneca’s proposed interpretation implausible, “explaining that UL engineers themselves refuted Joneca’s use of UL 430, its sole supporting reference.” Joneca argued that the consensus among engineers, or industry usage, wasn’t relevant, but the district court did consider the audience when it found that “Joneca had no support for its interpretation other than an inapplicable and non-consumer-facing safety standard.” Meanwhile, the materiality evidence supported the finding of literal falsity to consumers, including explanations from a national retailer’s website that “[g]arbage disposal horsepower (HP) determines what the disposal is capable of grinding” and evidence from yet another national retailer’s website discussing that “higher . . . HP” would mean “[f]ood waste will be ground into finer particles.” Thus, it was not clear error to find that Joneca’s horsepower claims referred to output horsepower by necessary implication.

Was that literally false? Joneca argued that its claims were not sufficiently unsubstantiated to meet the standard for literal falsity, because a literal falsehood has to be “bald-faced, egregious, undeniable, over the top,” or “completely unsubstantiated.” But those quotes came from discussions of “per se” falsity, as opposed to discussions of literal falsity that were “proved by evidence.” The latter category can also be literally false, and involves considerations of context and audience. (The Seventh Circuit’s “bald-faced” language is an invitation to err, and raises considerations probably better dealt with as materiality issues.) “At least when literal falsity is shown by evidence, a complete lack of substantiation for the opposing position—or absence of ‘conflicting evidence,’ as Joneca puts it—is not required.”

Materiality: The district court found that horsepower was “an inherent part of” garbage disposals because of “the importance of horsepower to the quality and characteristics of a garbage disposal.” In addition, InSinkErator’s “market research” showed that “consumers ranked horsepower as one of the top purchasing considerations for garbage disposals,” and retailers organized disposals by horsepower in shelving those products, which “signals that horsepower is an important—if not primary—distinction used by retailers to market [disposals] to consumers.” Retailer websites also expressly link horsepower to the effectiveness of disposal units, e.g., “[t]he higher the HP, the better the disposal will run.”

The court of appeals didn’t have to rule on whether the Second Circuit’s “inherent characteristic” language was appropriate; it rejected Joneca’s request for a requirement of “direct evidence showing how consumers would likely react to the alleged deception”—“like surveys and consumer declarations”—to show that a deception is material. To the contrary, “[c]ircumstantial evidence is not only sufficient, but may also be more certain, satisfying and persuasive than direct evidence.” There was no clear error in finding materiality.

Joneca argued that it submitted evidence that “consumers prefer Joneca’s disposers because of their better performance.” But the quoted customer reviews “primarily discuss how ‘powerful’ Joneca’s units are, indicating that consumers do care about power.” It didn’t matter that consumers were satisfied with their Joneca units; that didn’t show that they didn’t care about horsepower when choosing a disposal. In particular, “[b]ecause retailers display disposals to consumers by horsepower level, it was reasonable for the district court to infer that a false claim about a disposal’s horsepower—i.e., a horsepower claim that causes a disposal that lacks even the horsepower to qualify as Medium Duty to be displayed in the Heavy Duty section—would materially affect whether and how consumers would compare the unit to competing products.”

Injury: The court of appeals noted with approval the Second Circuit’s statement that “in many cases the evidence and the findings by the court that a plaintiff has been injured or is likely to suffer injury will satisfy the materiality standard—especially where the defendant and plaintiff are competitors in the same market and the falsity of the defendant’s advertising is likely to lead consumers to prefer the defendant’s product over the plaintiff’s.” The district court found that “horsepower—and thereby falsehood—is prominently displayed at the point-of-sale in retail shops” and reasoned that “horsepower is commonly used to differentiate garbage disposals.” It was not error to find that, when “a false statement is prominently displayed on a direct competitor’s product, and sold side-by-side at the same retailer as if to compare products and value, there is a real likelihood” of “diverted sales or diminished goodwill.”

The district court should have presumed irreparable injury from likely success on the merits, but its error didn’t help Joneca. That court independently found likely irreparable injury, which was not clearly erroneous. It apparently credited InSinkErator’s account that a retailer had awarded shelf space to Joneca instead of InSinkErator and that Joneca’s “fake value proposition” of inflated horsepower at a low price would influence bidding that was in process for “private label contracts with major retailers.” But, even if Joneca’s story had more details than InSinkErator’s, it wasn’t clear error to side with the latter.

court rejects politician's slogan claim

Cloobeck v. Villaraigosa, No. 2:25–cv–03790–AB (SK) (C.D. Cal. Dec. 8, 2025)

Cloobeck, a 2026 California gubernatorial election candidate, alleged infringement of the phrase “PROVEN PROBLEM SOLVER” by competing candidate Villaraigosa. Cloobeck used “I AM A PROVEN PROBLEM SOLVER” in connection with his gubernatorial campaign since March 2024; he applied to register it in late 2024. Villaraigosa later began using the phrase “PROVEN PROBLEM SOLVER” in connection with his campaign.

Obviously this is a bad claim. The difficulty is that trademark has extended far beyond protecting source indication, but source indication is the only thing that really involves a substantial government interest in suppressing political speech. We could say that the Lanham Act is only constitutional as applied to political speech when it addresses source identification, and not other kinds of (immaterial) confusion, but courts generally don’t want to do that and therefore end up having to make somewhat less convincing distinctions.

First, the court says, the Lanham Act governs commercial speech, not “purely political” expression. What about United We Stand Am., Inc. v. United We Stand, Am. New York, Inc., 128 F.3d 86 (2d Cir. 1997) (not for nothing, endorsed by the Supreme Court in JDI)? First, it’s not binding in the Ninth Circuit. Second,

the defendant was a political organization operating as an entity that provided membership, political advocacy, and fundraising services to the public. By contrast, here Villaraigosa is merely an individual gubernatorial candidate—he is not running a political organization engaged in offering “services characteristically rendered by a political party to and for its members, adherents, and candidates.” In addition, in United We Stand, the court emphasized that the defendant’s use of the mark was tied to soliciting contributions, memberships, and event participation, activities with clear commercial characteristics under the Commerce Clause.

Here, however, Villaraigosa’s use of “PROVEN PROBLEM SOLVER” occurs in the course of political messaging, debates, and campaign communications—not the sale or advertisement of goods or services.

I tend to think this distinction is unpersuasive even though I accept the result in United We Stand. [Side note: United We Stand was a default judgment, and so the facts are particularly unhelpful—I’m trying to track down some images if they're available.]

Political messaging and campaign communications also routinely involve soliciting contributions, event participation, and even memberships (donor’s circles!). They’re two different ways of saying the same thing. Please note the “contribute” button on these screenshots from defendant’s website, included in plaintiff’s complaint:

Which is to say, individual candidates promote services/participate in commerce just as much as political parties. However, the role of a name compared to that of a slogan can provide a meaningful difference: a name tells you who is speaking in a much more direct and unambiguous way than a slogan. It is a core source-identifier, where the interest in avoiding confusion is at its highest.

The court here also distinguishes other political speech cases like Browne v. McCain, 611 F. Supp. 2d 1073 (C.D. Cal. 2009), which applied the Lanham Act to unauthorized use of a musical work in political advertising as a sponsorship/approval case. The court said that the use of “PROVEN PROBLEM SOLVER” here “does not implicate confusion over the origin or sponsorship of goods or services, but rather falls within the heartland of core political expression. Accordingly, while Browne recognized that the Lanham Act may extend to certain political activities when there is a significant risk of confusion, this Court is unconvinced the Lanham Act is applicable to the political circumstances at bar.”

OK, but (1) if the issue is lack of confusion, no special treatment for political speech is required; (2) if the issue is that political speech requires us to tolerate more risk of confusion, that should be said outright; (3) if the factual claim is that this kind of political speech is just inherently less likely to cause confusion than two nearly identical political party names or the use of famous songs by famous entertainers, then that should also be said outright. To be clear, I think both (2) and (3) are correct and also more helpful than just saying “these are different situations,” because knowing why they’re different is useful. Why couldn’t one politician endorse another? Brad Lander and Zohran Mamdani cross-endorsed in their primary—and although if you’re reading this, you probably understand why that’s different, most Americans have only a vague understanding of ranked-choice voting.

The court thought this case was more like Think Rubix, LLC v. Be Woke. Vote, No. 2:21-CV-00559-KJM-AC, 2022 WL 1750969 (E.D. Cal. May 31, 2022), where the slogan “Be Woke. Vote” slogan was “inherently intertwined” with social and political advocacy and therefore noncommercial under the Lanham Act. “Both Think Rubix and the present case involve political and civic engagement campaigns that use short punchy phrases as part of their political messaging. In each, the marks’ purpose is to inspire individuals to vote, not to identify or promote a commercial product or service.” “PROVEN PROBLEM SOLVER” was also used in campaign materials and messaging to persuade voters, “not to engage in commercial trade.”

[Political fundraising is apparently “commercial trade,” though, at least when a party does it—this is not as good of a dividing line as “name” for purposes of protecting political speech.] “Villaraigosa is not selling goods or services or participating in the marketplace—he is seeking votes from the public for his 2026 California gubernatorial campaign.” [We’ve just stuffed the relevant considerations into the definition of “participating in the marketplace,” though—was the McCain campaign “participating in the marketplace” when it ran its allegedly infringing ad? If so, how was it doing so differently than defendant here? Are political endorsements a relevant “market”?]

Even if the Lanham Act did apply, there was no plausible risk of confusion.

Voters understand that Cloobeck and Villaraigosa are two distinct individuals and political candidates—they are opponents in a high-profile gubernatorial election. They have separate and distinct campaign websites, social media accounts, and both engage with the public widely and separately through campaign speeches and messaging. No reasonable person would believe Cloobeck and Villaraigosa are affiliated simply because both use a descriptive phrase commonly used by political candidates for their campaigns. Moreover, the [complaint] contains no allegations of misdirected donations, mistaken identity, or any other indica of confusion.

“PROVEN PROBLEM SOLVER” was also generic for a desirable political trait, not a source identifier. “When voters consider candidates for public office, they naturally seek individuals who can solve the problems of their communities.” Numerous politicians have used the phrase “proven problem solver” in campaign materials “dating back decades. This signifier in politics can be traced all the way back as far as 1989.” [So far back! /is old] “Granting exclusive rights to a single candidate for such a common descriptor would remove a phrase from ordinary political discourse and risk chilling core campaign speech.”

Cloobeck analogized to political trademarks obtained by other candidates, citing examples such as “MAKE AMERICA GREAT AGAIN,” “YES WE CAN,” and “BUILD BACK BETTER.” But “those slogans were historically distinctive and uniquely associated with a specific candidate or movement,” not merely descriptive. [Ugh. The first two at least were very deliberately, intentionally not new! If we want to protect political speech (we should), we need (a) a high barrier for protecting political slogans as a factual matter and (b) a test that is hesitant to impose liability on politicians’ speech. Both are useful, (a) to prevent the use of political trademarks as a sword against political speech and (b) as a shield for political speech even against non-politicians’ claims.]

[Side note that the court calls the phrase at issue a “descriptive, generic” slogan, and TM law would say there’s a big difference between the two in terms of theoretical protectability—but it doesn’t matter here, and also the PTO understandably requires more evidence of distinctiveness if something is highly descriptive/bordering on generic, so the court’s instincts here make sense.]

no abuse of discretion in PI requiring advertiser to terminate liens that it told homeowners weren't liens

People v. MV Realty PBC, LLC, 2025 WL 3719896, B341121 (Cal. Ct. App. Dec. 23, 2025)

Blogging more in my property law prof hat, but with false advertising. MV Realty recorded liens on its customers’ properties, but assured homeowners that these were “notices” and not “liens.” The court of appeals affirmed a preliminary injunction requiring, inter alia, that MV Realty terminate its recorded liens.

MV Realty’s “Homeowner Benefit Program” sold “Forward Listing Contracts” to California homeowners. “The program offered a cash payment to homeowners, of approximately .27 percent of their home value, in exchange for the homeowners granting MV Realty the exclusive right to sell their home.” MV Realty marketed the program as a “one-of-a-kind, innovative program that allows homeowners the chance to receive an immediate cash payment by agreeing that [MV Realty] will be your Real Estate agency if and when you decide to sell your home in the future” with “no credit check,” “[no] [r]equirement to [s]ell [y]our [h]ome,” and “no obligation to repay the money ....” This requirement applied if the homeowner sold the home within the next 40 years; if they didn’t use MV Realty, they were required to pay a three percent penalty of either the sale price or of the home’s initial valuation by MV Realty, whichever was higher, the “Early Termination Fee.”

The agreement stated that the homeowner’s “obligations hereunder shall constitute covenants running with the land” and granted MV Realty “a lien and security interest” in the property as security for the homeowner’s obligations under the contract. MV Realty promised to “consider in good faith any request from [the homeowner] to facilitate such refinancing or new mortgage by subordinating the lien of this [a]greement to the refinanced or new mortgage.”

Unsurprisingly, “[i]nternally, MV Realty referred to the memorandum as a lien and promoted it to investors as a security feature of a future revenue stream. Externally, underwriters, prospective lenders, and escrow officers treated the memorandum as a lien on the property.” But prospective customers heard a different story. “On its website and in its marketing e-mails, MV Realty stated it would not record a lien on the homeowner’s home; it would record only a memorandum to serve as public notice of the homeowner’s obligations under the agreement. MV Realty trained its telemarketers to tell homeowners it would not record a lien on their homes.”

The People sued for violations of the UCL and FAL. The People argued that MV Realty’s fraudulently placed liens caused ongoing harm to over 1,400 California homeowners who, as MV Realty explained in an investor presentation, are “unable to convey clean title without receiving a lien release from MV Realty.” The People “submitted declarations from over a dozen homeowners who contracted with MV Realty, and several more from declarants whose family members contracted with the company.” Homeowners stated that they never would have entered into the agreement if MV Realty had explained that there was a lien to them.

A few explained how the lien became an obstacle to their later obtaining a loan secured by the property, and they eventually gave up on refinancing. Others stated they were forced to pay the Early Termination Fee, which was ten times the amount of the consideration they had received from MV Realty, before they could secure refinancing. Many shared their views that MV Realty lied to them, that they no longer trusted MV Realty to sell their home, and that they felt trapped by the agreement. Almost all homeowner declarants stated they had not seen the 12-page agreement until a notary, who could not explain the terms of the agreement, brought the document to their home to be signed.

MV Realty submitted 51 declarations from California customers who stated that they were not misled by MV Realty and that they were aware that “MV Realty ha[d] the right to record th[e] [m]emorandum on my property records to provide notice of the agreement.” Its own spreadsheet showed that it did not provide the agreement to 80 percent of California homeowners who signed it until the moment a notary presented it to them. MV Realty admitted homeowners had difficulty refinancing because of the memorandum; there was evidence that some lenders rejected MV Realty’s offers to subordinate the memorandum. Its own document, “Termination of Memorandum of MVR Homeowner Benefit Agreement,” explained that the memorandum was an “encumbrance.”

The trial court found that “[MV Realty] knew the memoranda operated as liens, represented this to their investors, but materially misrepresented the effect of the memoranda to the Homeowners.” Thus, it granted the preliminary injunction, including the requirement to remove the liens.

The UCL and FAL are “broadly enforced to protect the public, including “extraordinarily broad” remedial power to enjoin prohibited business practices “in whatever context they may occur.”

Under California law, “[w]here a governmental entity seeking to enjoin the alleged violation of an ordinance which specifically provides for injunctive relief establishes that it is reasonably probable it will prevail on the merits, a rebuttable presumption arises that the potential harm to the public outweighs the potential harm to the defendant. If the defendant shows that it would suffer grave or irreparable harm from the issuance of the preliminary injunction, the court must then examine the relative actual harm to the parties.” An injunction in such circumstances is only appropriate if the trial court concludes, balancing (1) the degree of certainty of the outcome on the merits, and (2) the consequences to each of the parties of granting or denying interim relief, that an injunction is proper. The standard of review is abuse of discretion.

First, the court of appeals found there was no error on likely success on the merits. MV Realty argued that it “properly disclosed to homeowners that the memoranda would be recorded with the county recorder’s office,” so it made no material misrepresentations to homeowners, and that the “memorandum” wasn’t legally a “lien.” The court of appeals understandably disagreed. The evidence demonstrated that “[MV Realty] knew the memoranda operated as liens, represented this to [its] investors, but materially misrepresented the effect of the memoranda to the Homeowners.”

MV Realty argued that a lien has to be “a legal claim against a property to secure the payment of a debt” and the memorandum was a mere “notice disclosing its contract rights,” such that MV Realty could file a lien for 3% of the value of the property upon sale or transfer if the consumer breaches the agreement and does not use MV Realty in the real estate transaction.

Not so. “A lien is a charge imposed in some mode other than by a transfer in trust upon specific property by which it is made security for the performance of an act.” The documents called it “a lien and security interest.” More than once! MV Realty called it a lien when talking internally or to investors, and “[u]nderwriters who analyzed the memorandum instructed their agents to treat it as a lien or a mortgage.” There was substantial evidence of likely success on the merits.

What about balancing the harms? The trial court stated that it was “not persuaded that [MV Realty has] shown grave or irreparable harm to warrant denial of the preliminary injunction,” though it accepted MV Realty’s contention that if the preliminary injunction issued, it would “essentially [be] force[d] ... to cease business in California and require[d] ... to terminate thousands of [m]emoranda, which it ha[d] already provided consumers consideration for.” The court also accepted MV Realty’s contention that it would be put “ ‘in a state of financial disarray.’ ” Nonetheless, even if the district court wrongly found no grave or irreparable harm, MV Realty was not prejudiced and there was no clear error because the trial court acceptably balanced the harms to the parties. (And of course that’s one completely coherent way to read the statement that MV Realty didn’t show harm to warrant denial of the PI.)

“At this stage of the analysis, no hard and fast rule dictates which consideration must be accorded greater weight by the trial court. For example, if it appears fairly clear that the plaintiff will prevail on the merits, a trial court might legitimately decide that an injunction should issue even though the plaintiff is unable to prevail in a balancing of the probable harms.” The goal is to minimize the harm that would be caused by an erroneous interim decision.

The trial court didn’t clearly err when it found there would be imminent, irreparable harm to homeowners bound by the agreement if the preliminary injunction did not issue because each homeowner would be bound by terms they never would have knowingly accepted. Not one of the roughly 70 homeowners who submitted declarations stated that a cloud on marketable title “was something they willingly bargained for in exchange for the .27 percent of their home value they received as consideration.” (Yeah, I noticed that about the quote from MV Realty’s declarations too.)  “Even when MV Realty offers to subordinate its lien, as the evidence shows it has done in the past, many lenders will not accept the subordination. A homeowner who wishes to refinance or take a home equity loan, therefore, must pay the Early Termination Fee to clear the title.” Thus, there was no abuse of discretion in balancing the harms.

MV Realty proposed that instead of ordering it to terminate all memoranda, the trial court could order it to: provide notice to every customer, title company, and lender that the memoranda is not a lien; subordinate when requested to do so by a lender; and terminate a memorandum if a lender rejects the subordination. None of these suggestions was a deviation from what MV Realty represented was its contemporaneous practice to assist homeowners with refinancing. The People submitted evidence that homeowners nevertheless continued to suffer harm as they struggled to get in touch with the company to request subordination and complete the lengthy process of clearing title.

There was no abuse of discretion in finding these steps insufficient.

"monk fruit sweetener" plausibly should have more than 1.15% monkfruit

Grimbaldeston v. Saraya USA, Inc., 2025 WL 3677857, No. 25-cv-05649-RFL (N.D. Cal. Dec. 17, 2025)

Grimbaldeston brought the usual California claims based on allegations that Saraya deceptively overstated the amount of monk fruit in its sugar substitute. The court mostly declined to dismiss the case.

The back label describes the benefits of monk fruit and lists the ingredients: “Erythritol, Monk Fruit Extract.” Grimbaldeston alleged that testing confirmed that the Sweeteners contain 1.15% monk fruit extract, and that the remaining 98.85% is made up of Erythritol.

This was adequate to plead deception.  

In text that is more than twice as large as any other text on the front label of the product, the Sweeteners’ front label describes the product as “MONK FRUIT SWEETENER,” while the words “WITH ERYTHRITOL” are approximately one third of the size and written in a lighter color. The back label describes the health benefits of monk fruit, which it calls a “superfood” and “The Immortals’ Fruit.” The back label does not discuss Erythritol, other than listing it as an ingredient. At the pleading stage, Grimbaldeston has alleged that the amount of monk fruit extract in the Sweeteners is de minimis, and that a reasonable consumer would expect the Sweeteners to contain more than a de minimis amount of monk fruit, given the front label and the back label discussion.

Nothing on the label indicates the ingredient proportions, and the ingredient list reflects that the product contains more erythritol than monk fruit. “But even taking the ingredient list into account, it is plausible that a reasonable consumer would believe that a product prominently labeled ‘Monk Fruit Sweetener,’ and extolling the benefits of the fruit, would contain more than 1.15% monk fruit.”

Saraya argued that purchasers would know that a sweetener made “mostly of monk fruit” would be “cloying[ly] sweet,” and that “such products must contain a larger proportion of less-sweet ‘sugar alcohol’ ” to be a “one-to-one sugar replacement.” “While bee pollen collection is undisputedly common knowledge, it is plausible that an average consumer of sugar replacements would be unaware of the relative sweetness of monk fruit, even if they are aware of the supposed health benefits of monk fruit and specifically sought out a monk fruit product.” Also, even if so, “a reasonable consumer might plausibly have expected that the Sweetener was not primarily monk fruit while also expecting the product to have a non-negligible amount of monk fruit.”

Saraya also argued that because the “back label discloses that for a serving size of 8 grams, there are 8 grams of sugar alcohol (erythritol) ... [it] fully discloses that approximately 8 grams of each 8-gram serving is erythritol, not monk fruit.” But the word “erythritol” is not part of the “sugar alcohol” disclosure. A reasonable consumer plausibly wouldn’t know that only erythritol—and not monk fruit extract—contains sugar alcohol, or wouldn’t “connect the dots” to determine that nearly all of the Sweetener is comprised of erythritol.

The CLRA claim was, however, dismissed to provide the proper pre-suit notice.

 

trademark law firm loses trademark lawsuit

LegalForce RAPC Worldwide P.C. v. MH Sub I, LLC, No. C 24-00669 WHA, 2025 WL 3675365 (N.D. Cal. Dec. 18, 2025)

LegalForce, a law firm “specializing in trademark law,” sued online referrer to law firms MH for infringing two service marks. The court ruled for MH after a bench trial. CEO Raj Abhyanker served as trial counsel, reminding me of the old adage about an attorney who serves as his own lawyer.

LegalForce uses the service name LegalForce and legalforce.com, and owns a search engine for trademarks that primarily has used the service name Trademarkia and the website trademarkia.com. “The search engine has attracted visitors looking for trademarks and has converted some into paying clients for the law firm.”

LegalForce uses a composite mark with a parallelogram colored orange, with two rounded corners and two sharp, with LF inside and the stylized words “Legal Force” alongside. The composite is registered for “law firm services” as well as services “providing general information in the field of legal services via a global computer network.” Sometimes, LegalForce uses just the symbol portion, and it registered that separately in anticipation of this litigation. (Note: “Plaintiff failed to submit certified copies of the above registrations before our October 2025 bench trial and had no acceptable excuse for the failure. Instead, plaintiff … submitted certified copies after the trial record closed.… This is emblematic of the way plaintiff has prosecuted this entire case. Nevertheless, this order will treat the certificates as having been proven.”)

Composite mark

symbol only

MH isn’t a law firm, but offers referrals. “People having legal problems have been attracted by advertising to www.lawfirms.com, where some have filled out an interest form. Defendant has packaged the resulting client ‘leads’ and provided them to paying lawyers, including lawyers listed on online directories defendant also owns,” including avvo.com. Lawfirms.com initially used a mark that also had an orange parallelogram with two sharp comers; nested inside was a white Roman column. A stylized word to the right read: “LawFirms.com.”

accused mark

Soon after litigation began, and consistent with the court’s suggestion trying to spare both sides the cost of litigation, MH changed the symbol to crimson and changed the corners so that the tops were sharp and the bottoms rounded. The column and stylized word remained.

replacement mark

LF continued the case, seeking only injunctive relief as to the original composite.

There was no evidence of actual confusion. MH didn’t market its services using the composite mark in the same places where LF markets its services using either of its marks, “so there has been and will be no occasion for consumers to see both services’ marks and to confuse one versus the other.”

Both parties have used keyword marketing but “no single web search has returned or will ever likely return both plaintiff’s and defendant’s websites showing their marks.” There was no evidence that the parties have or would bid on the same keywords for the websites at issue (as opposed to other sites like avvo.com). For SEO, there was “no credible evidence that defendant has undertaken any effort to appear in search results for the same searches as plaintiff, or ever would…. No credible evidence showed even that the service names have appeared alongside each other.” Likewise, “no credible evidence proved that anything about the websites themselves was confusing.”

At trial, LF offered a theory of AI chatbot confusion. However, it offered no admissible evidence in support of such a theory.

The parties have used the service marks at issue in social media, but not on the same social media platforms. LF used its symbol on LinkedIn, but “LawFirms.com,” unlike LF, does not target businesspeople. “It is not the service name of a standalone business with its own employees.” Instead, defendant markets on Instagram, Facebook, and TikTok, where there was no evidence of LF having marketed. There was no evidence that MH marketed or would market at any conference or physical location. “LegalForce and LawFirms.com are not marketed in the same places in part because they do not offer the same services.”

There wasn’t even evidence that prospective lawyers buying MH referrals would see the accused mark. While avvo.com has listed some trademark lawyers, lawfirms.com “almost always has attracted and referred individuals having personal problems”: car accidents, worker’s compensation, and divorce. “It has presented all comers with a general webform. Some (very few) who have completed the form have indicated in it that they had trademark needs.” Revenue for each personal injury lead has been about $85, while revenue for each trademark lead has been about $46. For all the relevant periods, lawfirms.com collected and distributed fewer than 25 total trademark leads to trademark lawyers, representing less than $1,000 in revenues, a small fraction of all leads and revenue, and none of those came during the period when it used the accused mark.  

Meanwhile, LF has never provided legal services for personal injury, employment issues, or family law, received any appreciable number of inquiries from any persons seeking any such services, or systematically made referrals of any kind to any other lawyers or law firms. Although it asserted an intent to do the first and third of these, the court found this not credible. “Plaintiff has had more than a decade to broaden its legal practice and/or to begin making referrals systematically to other lawyers and it has failed to do either.”

The customers are moderately careful: “They are more mentally alert than someone grabbing a lemon-lime soda. They would not be likely to confuse the two marks even if the marks were seen side by side.” Although one of plaintiff’s experts testified that LF offered relatively less expensive trademark registration services, “suggesting but expressly not concluding that they may be relatively less sophisticated and take relatively less care,” relatively less care was not no care — “especially if being compared to the care taken for more expensive legal services.” “Protecting a business’s reputation is important, even if it is on average more important to be made whole after the kind of bodily injury that prompts a person to seek a lawyer.”

The senior marks weren’t strong, despite the composite mark’s incontestability. LF had “barely” used the two marks at issue, focusing instead on “Trademarkia,” including in the header for legalforce.com. There was no credible testimony or documentary evidence of any paid advertisement using LF’s “LegalForce” service name or marks. LF did not even prove that its own law firm clients know the name “LegalForce.”

Conceptually, LF’s marks “comprise common features arranged in a common way, with limited distinctions.” A squat parallelogram with some rounded corners and some unrounded ones is “shared by other marks in commerce.” There were many other orange parallelograms already in use, although the gradient added a slight distinction. Bolding one but not both words “distinguished the stylings from other marks somewhat.” The choice of a “horizontal stack” with the symbol on the left and the word on the right was not arbitrary, but rather “a common and functional choice to fit well at the top of a website.” Thus, there was neither commercial nor conceptual strength.

There was no intent to confuse: “Defendant had no reason to ride plaintiff’s coattails, nor even to step on them: Plaintiff’s marks were not well known. Plaintiff and Defendant were not proximate or expanding.” MH chose a squat parallelogram “because it presented well on websites in conjunction with words.” It chose its colors, fonts, and stylings to complement one of its existing logos (Avvo blue): “designers treat those colors as complementary.” MH then chose the sizing and stacking to match its existing logos, so that its mark could be configured to appear clearly at the top of its website.

“The worst that could be said was that defendant neglected to do a trademark search before settling on a mark that assembled common elements in a common way. … The failure to conduct a trademark search before selecting the original mark did not result from bad faith. A trademark search was not required by law.”

Nor were the parties’ marks very similar. The column distinguished them; the initials “LF” do not suggest the same thing as the Roman column. While each set of letters in the words includes the capitalized letters L and F, they spelled different words. The senior mark bolds only the first word, “Legal,” but not the second, “Force,” while the junior mark bolds both words “LawFirms.” “In meaning, the senior mark describes one legal force, while the junior mark uses the generic term for many or all law firms.” As a whole, they were arranged in a “common, functional” way for a mark designed to be displayed at the top of a web page. “No credible evidence proved that when viewing the marks as a whole this horizontal stacking itself was important to any consumer impression or to any association with any service.” Indeed, “the differences stood out in the overall consumer impression.”

LF’s survey showed respondents ead-to-head comparisons of the composites and asked: “If you saw the logos [below] on two different websites [whe]n searching for law firms, would you think they are connected, affiliated, or associated in any way?” Thirteen percent answered “Yes.” Nineteen percent said “maybe.” (The expert initially grouped these together as 32%; the court was not pleased.)

“The survey question posed a scenario that was not specific and that did not reflect any scenario proven to exist or to be likely to exist in commerce.” It didn’t even show what the websites would look like. There was no control. (Indeed, LF ran a survey with a control, showing no real difference between the test and control cells, so it dropped the control and re-ran the survey; “[o]ther methods to reduce bias were known to plaintiff but not followed in the re-crafted survey.” The questions “incorporated false premises, were ambiguously worded, and/or were reported to the Court with at first material omissions.”

Defendant’s better survey showed consumers the junior mark on lawfirms.com, then asked if they believed the services were put out by, affiliated with, or approved by some other business, whose marks or name they might recall and then write in. “No one responded with LegalForce, Trademarkia, Raj Abhyanker, or anything similar. This survey was run with likely consumers of plaintiff’s services and with likely consumers of defendant’s services. The answer was zero for either cohort.”

The court had other criticisms of Abhyanker in his roles as CEO and trial counsel. E.g., he “testified misleadingly under oath to having spent $10 million advertising the mark. On cross-examination it was revealed that zero of that $10 million had been spent buying ads showing the actual marks at issue.” On the other hand, the court found that discovery was “marked by failures by counsel on both sides.”

The only legal conclusion of note is the court’s recognition that incontestability doesn’t add actual market strength. “[E]ven if incontestable, a mark that remains conceptually and commercially weak cannot be asserted to exclude from its designated market other trademarks that are unlikely to be confused with it.”

license agreement termination might be invalid transfer in gross without a new partner for licensor

Form Portfolios LLC v. Food52, Inc., 2025 WL 3638165, No. 24-cv-07690 (NCM) (CLP) (E.D.N.Y. Dec. 16, 2025)

Form designs consumer products, partnering with other companies that license those designs. Food52 sells cookware and other homegoods under the brand Dansk. This dispute arises from their former collaboration.

Dansk is known for products designed by Jens Quistgaard, a Danish designer…. After Quistgaard was no longer Chief Designer for Dansk, Quistgaard continued to develop designs for kitchenware on his own. … In 1992—long before defendant acquired Dansk—Dansk and Quistgaard entered into a contractual arrangement) for Dansk to have the opportunity to purchase designs that Quistgaard continued to invent. … Quistgaard retained all rights for designs not accepted by Dansk. The 1992 Design Agreement provided Dansk with a limited license to utilize Quistgaard’s distinctive and famous name, signature, biographical data, photograph and/or likeness on the accepted designs.

Quistgaard died in 2008; his heirs set up an entity that entered into a new agreement with Dansk, providing it a right of first refusal to certain archival designs and again provided Dansk a limited license to utilize Quistgaard’s name, initials, signature, biographical information, and likeness for promotional materials for the additional accepted designs. This agreement expired in 2022.

The parties then entered into an agreement allowing Dansk to make and sell products based on certain designs owned or managed by Form. Dansk also asked Form to act as an intermediary with the Quistgaard Family because of Form’s expertise working with the heirs of designers. The Quistgaard family granted Form the exclusive right to negotiate a new agreement with Dansk, including provisions making Form its legal representative. The parties then entered into a new license, which said it superseded all previous licenses.

The new agreement stated, among other things, that “[a]ny trademark, other than [defendant]’s house mark or brand, that is adopted by [defendant] in marketing Licensed Products in addition to a Licensed Trademark that becomes associated exclusively with any or all Licensed Products as a result of such marketing, shall revert to [plaintiff] upon termination of this Agreement for any reason,” including “the name of the designer in question, their likenesses, signatures, logos and initials for use in connection with the promotion, advertising, marketing and sale of Licensed Products.”

Then a dispute developed and Dansk allegedly unilaterally ceased making payments to Form. But it allegedly continued to sell products covered by the new agreement and to use various trademarks, including the Jens Quistgaard name and the Kobenstyle registered trademark.

Form sued for trademark infringement under Section 32 of the Lanham Act and false association, false advertising, and trademark dilution under Section 43.

Section 32: Kobenstyle is a specific line of cookware. The parties agreed that this trademark was initially owned by Dansk in 2013, but Form argued that the license agreement transferred it to Form when the license was terminated, implicitly arguing that the Kobenstyle trademark was not “[Dansk]’s house mark or brand.”

First, the court found that summary judgment was the right place to make the argument that the agreement’s reference to “revert” meant that the agreement only covered marks Form previously owned; it never owned Kobenstyle. At the motion to dismiss stage, though, the court accepted the argument that the only things exempt from “reverting” are Dansk’s “house mark or brand.”

Dansk then argued that, regardless, this section would fail to actually transfer ownership because it was a prohibited “in gross” transfer of trademark rights.  “[F]or a trademark transfer to be valid, the transfer must include the underlying trademarked commercial undertaking in some meaningful respect.” It was true that no aspect of defendant’s business has changed hands, but Form argued that a trademark can be validly transferred even without transfer of the underlying business so long as the recipient continues or intends to continue producing similar goods. “The fundamental requirement for a valid transfer of trademark is continuity of the underlying product or business.”

However, the complaint didn’t plead that Form intends to produce or market Kobenstyle products within a reasonable timeframe or partner with a different collaborator to do so. Thus, the section 32 claim failed.

43(a)(1)(A) false association: Form alleged that Dansk’s use of Jens Quistgaard’s name, initials, signature, biographical information, and likeness was actionable. Form properly alleged standing: its interests were within the zone of interests, which for 43(a) doesn’t require trademark ownership, and it sufficiently alleged that its re-licensing rights were being harmed by Dansk’s competing uses.

Dansk argued that it was using Jens Quistgaard’s name and initials only in a descriptive and factual sense—to convey to consumers that defendant is selling goods that were, in fact, designed by Quistgaard. But this doesn’t work on a motion to dismiss because descriptive fair use is a fact-intensive inquiry. (Could this be reframed as a Dastar defense that would work?)

However, the 43(a)(1)(B) claim was dismissed as duplicative with the unregistered trademark infringement claim. T The idea that consumers will falsely believe that defendant is authorized to sell trademarked goods does not sufficiently entail or imply a false statement that “go[es] beyond mere claims of false association.”

Dilution: of course not; Form didn’t even bother to defend it.

Reading list and comments: Doctrine, Data, and the Death of DuPont

Thomas Reichert, Doctrine, Data, and the Death of DuPont  (eta SSRN link)

 Abstract: For fifty years, courts have claimed to apply a comprehensive thirteen-factor test for trademark confusion. They are lying, or at least deeply mistaken. Using AI-powered analysis of 4,000 decisions, this Article proves what practitioners have long suspected: the test has collapsed to just two factors. 

 Using a large-language-model to extract scored findings for all thirteen factors from approximately 4,000 TTAB inter partes decisions (2000-2025), the study applied statistical models to predict case outcomes. Mark similarity (Factor 1) and goods/services relatedness (Factor 2) alone achieve 99.37% accuracy. Adding the remaining eleven factors increases accuracy to only 99.79%, which is a mere 0.42-point improvement with no practical significance. More striking still, a simple categorical rule predicting confusion if and only if both factors 1 and 2 favor confusion achieves 99.52% accuracy, outperforming the regression models. Further analysis confirms that most secondary factors either repeat information already captured by the core two factors or contribute nothing meaningful to outcomes. 

 These findings confirm at scale what prior scholarship has suggested: in determining trademark confusions, courts pay lip service to comprehensive multi-factor analysis while actually deciding cases based on just two considerations. The results also reveal concrete harms from this doctrinal gap: parties spend substantial resources litigating factors that do not influence outcomes, case results become harder to predict in advance, and adjudicators exercise broad discretion without meaningful constraints. 

 The Article explores how these findings might inform doctrinal reform, how reforms would center the two determinative factors and limit secondary considerations to narrow tiebreakers in genuinely ambiguous cases. Finally, it advances a broader "multifactor collapse" hypothesis and outlines a research agenda for testing whether other legal balancing frameworks exhibit similar patterns where doctrinal complexity masks simpler underlying decision-making.

My comments: Empirical support for John Welch’s mantra, which turns out to be understated—mark and goods don’t predict 95% of the outcomes of 2(d) appeals to the TTAB, they predict 99%!

A small point: I think the article understates Beebe’s findings on the importance of intent, which is the factor that he finds to be important that this analysis doesn’t. This may be related to the big point: You can’t directly compare registration inquiries, which are conducted in the abstract, to infringement inquiries, which consider all the relevant context. Actual confusion is especially unlikely in 2(d) inquiries, and so is intent evidence.

This paper could be very useful, but without attention to the differences between 2(d) and infringement, it will not reach its potential and might serve to confuse people who aren’t already conversant in trademark law. This shows up already in the abstract, which starts off with "courts" but then discusses the TTAB. Likewise, on p.44, right after saying clearly that the results are about the TTAB, the paper says “Some readers may object that courts must have reasons for discussing all thirteen factors. This objection conflates rhetoric with reality. Courts discuss Factor 8 (concurrent use) because doctrine requires it, not because it changes outcomes.” But the TTAB is not a court. This also means that, e.g., claims about litigation costs aren’t comparable; the proper figure is estimates for costs of opposition, which AIPLA collects separately from litigation costs in its surveys.

The results also have fascinating implications for the question of crowding on the register. If crowded fields rarely matter, that gives existing registrants even more of an advantage than the crowding literature might suggest, even as 2(d) refusals seem to be rising.

reasonable consumers read promotion terms on a gambling app, court rules

De Leon v. DraftKings, Inc., 2025 WL 3551627, No. 25cv644 (DLC) (S.D.N.Y. Dec. 11, 2025)

The court rejects false advertising claims against gambling site DraftKings. “Three of the plaintiffs became addicted to online gambling and have suffered both financial and emotional harm from using the defendants’ app to gamble on sports.” Nonetheless, they didn’t identify deception that had caused this.

The plaintiffs challenged advertisements of “No Sweat” bets and a $1,000 deposit bonus, and “the use of VIP Hosts to urge users of the app to continue gambling even when they have lost sizeable sums of money.” Ads for the “No Sweat” promotion allegedly imply that users may place bets of up to $1,000 without the risk of losing that money, but a consumer who loses a bet cannot simply cash out a refund but must place a “Bonus Bet” in the refund amount. That “Bonus Bet” has no cash value, is non-transferrable, and has an expiration date. They can only win by placing a successful, in-the-money Bonus Bet, which might or might not happen. The key language:  “Get a bonus bet back in the amount of your original wager if your first bet doesn’t hit.” There’s an “information or i symbol” with a hyperlink to those terms, allegedly in “impractically small font size.”

Another TV ad announced that new customers can receive “a 100% deposit match up to $1,000”. Plaintiffs alleged that this is misleading because

DraftKings will only match 20% of a user’s deposit. To obtain the full benefit of the promotion, a user must deposit $5,000 and place bets with minimum odds of -300, risking at least $25,000, all within 90 days. Moreover, the bonus is not rewarded as withdrawable cash but rather as “DK Dollars”, which can only be used for further gambling.

The ad also said “Bonus funds are earned as you play,” and allowed users to select an amount.  After collecting payment information, the app described the terms of the offer in more detail:

A user’s first deposit (min. $5) qualifies the user to receive up to $1,000 in bonus funds in the form of site credits that can only be used on DraftKings. Bonus amount is equal to 20% of that deposit amount, not to exceed $1,000 (the user must deposit $5,000 to be eligible to receive the maximum bonus amount of $1,000). Bonus funds will be awarded to the user according to the following play-through requirement: for every $25 played on DraftKings in DFS/Sportsbook/Casino, the user will receive $1 in bonus funds released into their player account (e.g., a $5,000 deposit requires a user to play through a cumulative total of $25,000 in daily fantasy contests, sportsbook (-300 odds or longer), casino products, or any combination thereof to receive the maximum possible bonus amount of $1,000). The play-through requirement must be met 90 days from the date of first deposit to receive maximum bonus. 

[FWIW, I think most regulators would think that the initial offer needs to disclose that you don’t get withdrawable money but just site credit. That’s a really material qualification!]

As for the VIP Hosts, one plaintiff’s VIP Host contacted him after he had suffered a significant loss on the DraftKings platform and offered him a 100% deposit match of up to $500, contingent on the plaintiff making a new deposit that same day. “After the plaintiff informed his VIP Host that he was behind on bills, the VIP Host sent him another text about a new deposit promotion.” Another one reported that, on days of losses, the plaintiff’s VIP Host would deposit more credits and offers into his account. “When the plaintiff set temporary limits on his betting, the VIP Host promised to send him new promotions and credits once the limits expired.” [This seems unfair, even if not deceptive: again, regulators could intervene here without the limits on individual plaintiffs.]

DraftKings allegedly only asks yes/no questions such as “are you depositing expendable income that you can afford to possibly lose?” “When one of the plaintiffs lost over $100,000 in a single day, which was nearly five times what he earned at work in a year, DraftKings did not cut him off from gambling on its site or connect him with addiction resources.”

First, the court reasoned, the allegations that “All of the advertisements these Plaintiffs saw were materially similar” were insufficient to state a plausible claim of misleadingness. [I would think “contained the same deceptive promotion” should suffice.]

But also, there was no identified misleadingness. “Accurate and complete terms of each promotion were fully disclosed to users of the app.” While a reasonable consumer doesn’t have to consult the nutrition label on the side of a snack box to check information about product ingredients that is presented in large bold font on the front of the box, the court concluded that apps are different:

The plaintiffs do not assert that any information contained on the app was misleading. The terms of the promotions are readily available on the app and are presented to the user before and during the purchasing process. They are accessed through the very same pages that the consumer uses to place the promoted bet. A reasonable consumer of an online platform would be expected to look at the terms of promotion, which are readily accessible, before accessing the promotion.

And the court concludes, puzzlingly to me, that font size doesn’t matter on an app: “The FAC does not allege that the promotional terms were in unusually small font for a phone app or that the size of the font could not be expanded through operation of the phone and app.” My eyes don’t get better when I’m looking at an app! And a user who’s encouraged by design not to read tiny print still doesn’t get the material qualifications disclosed in the tiny print.

Unlike the FTC, the court also thinks the “(i)” symbol with a hyperlink was enough to put consumers on notice (the FTC’s position is that a symbol that doesn’t tell you what it’s about will not give consumers enough reason to click). And the full disclosure of the terms for the $1,000 Bonus was made “on the very page of the app where the user made that selection. A reasonable consumer acting reasonably under the circumstances would have read the terms.”

Unjust enrichment and product design liability claims also failed.

As for the VIP Host program, there weren’t plausible allegations that such statements or conduct were directed to consumers at large. “VIP Hosts engage in personalized and targeted outreach to unique consumers to encourage them to gamble.” The complaint alleged that VIP Hosts are trained to cultivate trust with individual users and to use the individual user’s data “to give them outreach and attention that feels personalized and fortuitous.” “In sum, the FAC describes personalized offers sent in response to an individual’s situation. It does not describe communications that were deceptive or misleading and that were directed to consumers at large or similarly situated consumers.” Comment: this language is very promising for entities seeking to avoid liability for whatever their AI comes up with!

Even though the complaint alleged that VIP Hosts’ solicitations “were substantially uniform in content, presentation, and impact upon consumers at large,” that was too conclusory.

Gross negligence and fiduciary duty claims also failed.