No Trademark Infringement Liability Based on Use of a Political Slogan ("Proven Problem Solver") |
Free Speech
Eugene Volokh | 12.29.2025 10:22 AM
From Judge André Birotte (C.D. Cal.) in Cloobeck v. Villaraigosa, decided Dec. 8 but just posed on Westlaw:
This action arises out of the 2026 California gubernatorial election and the use of the phrase "PROVEN PROBLEM SOLVER." … Cloobeck's First Amended Complaint (FAC) alleges as follows:
Cloobeck and Villaraigosa [were at the relevant time] both candidates in the 2026 California gubernatorial race. Cloobeck has been using the phrase, "I AM A PROVEN PROBLEM SOLVER," (the "Senior Mark") in connection with his gubernatorial campaign since March 2024…. On December 12, 2024, Cloobeck filed an application to register the Senior Mark with the U.S. Patent and Trademark Office ….
Months after Cloobeck's first use of the Senior Mark in connection with his 2026 California campaign, Villaraigosa began using the phrase "PROVEN PROBLEM SOLVER," (the "Infringing Mark") in connection with his campaign. Villaraigosa displayed the Infringing Mark publicly including on his website and social media accounts….
Cloobeck sued, but the court disagreed:
[i.] The Lanham Act Protects Commercial Speech, Not Purely Political Expression …
The Lanham Act was enacted to prevent consumer confusion and protect commercial goodwill. The Ninth Circuit has stated that the Lanham Act was "expressly enacted to be applied in commercial contexts" and therefore "does not prohibit all unauthorized uses of a trademark." At the heart of the Lanham Act, it was "intended to protect commercial interests against unfair competition in the market place of goods and services, not the market place of ideas and opinions."
While the Lanham Act primarily addresses commercial speech, courts have recognized its applicability to political speech under certain circumstances. Relying on a Second Circuit case that has expanded the Lanham Act's reach to political speech, Cloobeck urges the Court to find the Lanham Act applicable to his Senior Mark for his campaign slogan. In United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc. (2d Cir. 1997), the Second Circuit held that political activities, including organizing, soliciting, endorsing........