No Trademark Infringement Liability Based on Use of a Political Slogan ("Proven Problem Solver")
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 candidates, and distributing literature, constitute "services" within the meaning of the Lanham Act.
While persuasive, United We Stand does not resuscitate Cloobeck's claim. First, and notably, this case is a Second Circuit decision and not binding in the Ninth Circuit. Moreover, the context of United We Stand and the case at bar are vastly different. A key distinction is that in United We Stand, 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. Accordingly, the Court finds the extension of United We Stand's holding to the case at bar inapposite.
The Court acknowledges that other courts within this district have reached the opposite conclusion. In Browne v. McCain (C.D. Cal. 2009), a court held the Lanham Act could apply in a political context, finding a campaign's unauthorized use of a musical work in its advertising potentially actionable under trademark law. Browne, however, is easily distinguishable from the current case. The court's analysis in Browne hinged upon a likelihood of confusion analysis …. Because the court concluded that the defendant's campaign's use of the song created a likelihood of confusion as to sponsorship or approval, it held the Lanham Act applied. Unlike the situation in Browne, however, 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.
On the contrary, the Court finds the facts of Think Rubix, LLC v. Be Woke. Vote (E.D. Cal. 2022), where a district court declined to extend the Lanham Act to political speech, far more apposite. In Think Rubix, the court found that the use of defendants' "Be Woke. Vote" slogan to be "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. Likewise here, "PROVEN PROBLEM SOLVER" is being used in campaign materials and messaging to persuade voters, not to engage in commercial trade….
[ii.] Even If the Lanham Act Extended to Political Speech, There Is No Plausible Risk of Confusion …
Assuming arguendo that the Lanham Act should apply to noncommercial political speech, the Court is nevertheless unpersuaded that any likelihood of confusion [required for Lanham Act liability in this context -EV] exists between the two marks sufficient to trigger Lanham Act protection. 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 FAC contains no allegations of misdirected donations, mistaken identity, or any other indica of confusion. To the extent any risk of confusion exists, the Court finds it purely hypothetical and insignificant….
[iii.] "Proven Problem Solver" Is a Descriptive, Generic Phrase Not Entitled to Exclusive Protection
The Court further declines to adopt Cloobeck's position because the Senior Mark is generic in nature and the requested relief is overly broad. "PROVEN PROBLEM SOLVER" describes 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—whether addressing homelessness, the economy, or housing. In that sense, voters are, by definition, looking for "problem solvers." Given this, it is unsurprising that 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.
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. The record also shows that Cloobeck has filed roughly seventy-five trademark applications for various slogans and phrases, including the Senior Mark. Enforcing this particular mark would effectively grant Cloobeck a monopoly over common campaign rhetoric, barring not only Villaraigosa but potentially any future candidate from using these three ordinary words together. Although the Court does not view this private enforcement action as implicating the First Amendment directly, the practical effect of granting such relief would extend trademark protection well beyond its proper bounds.
Cloobeck argues that enforcement is consistent with the many political trademarks obtained by other candidates, citing examples such as "MAKE AMERICA GREAT AGAIN," "YES WE CAN," and "BUILD BACK BETTER." He contends that these registrations reflect a common practice among candidates to distinguish their campaigns through identifiable slogans. While it is true that some political slogans have been registered under as trademarks, those slogans were historically distinctive and uniquely associated with a specific candidate or movement.By contrast, the Court finds that the Senior Mark—"I AM A PROVEN PROBLEM SOLVER"—is merely descriptive and lacks any distinctiveness or singular association with Cloobeck's campaign. The Court is unconvinced that mere chronological priority in filing a trademark application entitles Cloobeck to exclusive control over such inherently generic political language. Accordingly, the Court declines to extend the Lanham Act to circumstances that would effectively restrict candidates from using ordinary campaign language.
Finally, the Court is especially cautious about the breadth of relief Cloobeck seeks. His Prayer for Relief requests an order enjoining Villaraigosa and all those acting in concert with him from using any mark "confusingly similar" to Cloobeck's. Although Cloobeck presently identifies only the phrase "PROVEN PROBLEM SOLVER," the Court is concerned that such language could easily be expanded to encompass other ordinary expressions such as "PROBLEM SOLVER" or "PROVEN TO SOLVE PROBLEMS." This underscores the slippery slope inherent in granting the requested injunction. Moreover, while the immediate relief is directed at Villaraigosa, its logic could extend to other political candidates using comparable phrasing in the future. Given the generic nature of the Senior Mark and the difficulty of crafting narrowly tailored relief without unduly restricting political speech, the Court concludes that the Lanham Act cannot support the claim or the remedy sought….
Keith J. Wesley, Christopher W. Arledge & Eric M. George (Ellis George LLP) represent Villaraigosa.