Cloobeck v. Antonio R. Villaraigosa, et al. was an attempt to apply the Lanham Act in a political setting rather than a commercial one. Stephen Cloobeck and Antonio Villaraigosa were both running for governor in California (Cloobeck has since dropped out) before Cloobeck sued Villaraigosa for trademark infringement and unfair competition under the Lanham Act. At issue was Villaraigosa’s use of the phrase “Proven Problem Solver,” which Cloobeck claimed was infringing on his mark, I AM A PROVEN PROBLEM SOLVER. Villaraigosa responded by bringing a motion for judgment on the pleadings.
Plaintiff relied heavily on the Second Circuit’s United We Stand America, Inc. v. United We Stand, America New York, Inc., in which that court applied the Lanham Act to a trademark dispute between political organizations. Other courts had also found that organizing, soliciting, and handing out political literature were services that could be regulated through the Lanham Act. This court noted that unauthorized use of a musical work in advertising campaign for political purposes has been successfully challenged under trademark law because it created a likelihood of confusion about whether the performer sponsored or approved the message.
Plaintiff claimed that the Lanham Act applied to this case as well because the alleged infringement was tied to soliciting contributions and memberships — things that the United We Stand court found to have clear commercial characteristics. That said, this court noted that United We Stand was not precedential because it was decided in a different circuit. Even if the defendant had been able to show that the Lanham Act was appropriate in this case, the court said, plaintiff would not have been able to show likelihood of confusion under the Ninth Circuit’s multi-factor Sleekcraft test.
The district court noted that the goal of the Lanham Act was to ensure consumers could rely on the source of a product. Coolbeck’s mark I AM A PROVEN PROBLEM SOLVER described a desirable political trait, not a unique source. No reasonable person would think that Cloobeck and Villaraigosa were affiliated. The court further pointed out that enforcing plaintiff’s mark would effectively grant him a monopoly over campaign rhetoric, banning ordinary expressions like “problem solver” or “proven to solve problems” because they would be confusingly similar to the registered mark
The court ultimately granted summary judgment to the defendant.
One frustrating aspect of this case was the judge’s imprecise usage of trademark terms, like conflating “generic” and “merely descriptive.” But this seems to me to be the right decision: having an enforceable trademark on political rhetoric could grant control of political discourse and alleged political virtues to one person or party for as long as they were in the game… Obviously, that’s not acceptable.
