Political Ad’s Use of Trademark until Election Day Not Infringement

CaptureOn October 28, 2014, Judge Paul Grewal of the Northern District of California ruled that a political advocacy website’s confusing use of the mark CHOOSE ENERGY could stay up . . . but perhaps only until election day.

The plaintiff, Choose Energy, Inc., operates an online energy marketplace at chooseenergy.com, through which individuals and businesses in several states can shop for an energy supplier. Shortly before October 10, 2014, Choose Energy discovered that the website chooseenergy.org had been acquired by the American Petroleum Institute (“API”). API began using the site for its “Choose Energy” campaign, a series of political messages encouraging voters to support candidates in the current election cycle who are in favor of further development of domestic oil and gas reserves.

On October 10, 2014, Choose Energy filed suit for trademark infringement and requested a temporary restraining order. Choose Energy alleged that “API is ‘fracking’ Choose Energy’s brand and is likely to cause confusion.”  Judge Grewal agreed that Choose Energy “may well be right that it faces a substantial likelihood of confusion,” and that the partisan nature of API’s campaign “strongly suggest[ed]” the possibility of harm to Choose Energy’s reputation.  Judge Grewal further agreed that political activity can trigger Lanham Act liability in certain circumstances.

However, the Court held that such circumstances were not present here. API’s political use of “Choose Energy” did not contain “even a whiff of commercial activity.”  Political speech with no commercial component, the Court held, can only trigger Lanham Act liability if the parties are in competition, and here “there is no world in which API’s political activity might compete with Choose Energy’s non-partisan commercial energy platform.”  Thus, Choose Energy could not show a likelihood of success on the merits and its motion for injunctive relief was denied.

Notably, the Court’s opinion repeated several times that API’s “Choose Energy” campaign was only intended to last until November 4, 2014, and even reminded API that it had made a “commitment under penalty of perjury that its campaign will end come election day.” So although the temporary nature of the site may not have figured into the Court’s analysis, and although the Court did not directly order API to take down the site after election day, the Court did hint that API’s commitment to end the campaign, if not enforceable under the Lanham Act, may now be enforceable under the Court’s sanctioning powers.