HomeVestors opinion shows that, post-JDI, Rogers v. Grimaldi can't give security to titles

HomeVestors of America, Inc. v. Warner Bros. Discovery, Inc.,2025 WL 2301911, No. 22-1583-RGA (D. Del. Aug. 8, 2025)

Rogers v. Grimaldi no longer provides a path to earlydismissal for many expressive uses in titles. For titles, it might be anaffirmative defense, though even there the path seems rather narrow.

HomeVestors, which has registrations for THE UGLIEST HOUSEOF THE YEAR, WE BUY UGLY HOUSES, and UGLY HOUSE?, and uses THE UGLIEST HOUSE OFTHE YEAR in connection with a yearly home renovation contest for itsfranchisees, sued defendant WBD for its TV show, “Ugliest House in America.”

The court held that the Rogers defense required atrial on whether the use was source-identifying. HomeVestors argued thatUgliest House in America must be source-identifying because it is the title ofa television series, because WBD and its production company have characterizedit as source-identifying in contracts with each other and with the host of theshow, and because the titles of many of WBD’s other television shows areregistered trademarks. WBD argued that none of those things were legallyrelevant, and that it presented unrebutted evidence—survey data—indicating thatthe public does not associate Ugliest House in America with HGTV or WBD.

The court found a material factual dispute on use as a mark.

Specifically, HomeVestors alleges that the marks are similar(how does this bear on trademark use by WBD?), that both parties run acontest related to ugliest homes (how does this bear on trademark use by WBD?),that internet searches for HomeVestors’ marks return results for WBD’s show(how does this bear on trademark use by WBD?), that promotional materials forthe show emphasize the words in common with HomeVestors’ marks (at leastplausibly relevant to whether WBD is making trademark use), that WBD,either itself or through its agent, initially sought to take advantage ofconsumer recognition of HomeVestors’ brand for casting purposes (maybe relevant),and that WBD is actively competing with HomeVestors franchisees for houses andhomeowners (ditto).

But how are these things to be weighed against the survey evidenceor the principle “TV show titles are trademarks”? The court says: “Where, ashere, a program’s title plainly describes its subject matter, a reasonablefact-finder could conclude that the title is not source-identifying” (citing Downto Earth Organics, LLC v. Efron, 2024 WL 1376532, at *4 (S.D.N.Y. Mar. 31,2024) (concluding at the pleading stage that the program title “Down to Earthwith Zac Efron” merely “identif[ied] the subject matter and tone of the[s]eries” and was therefore subject to the Rogers test)). WBD alsooffered evidence that it chose the title Ugliest House in America solely forits descriptive value, along with survey evidence suggesting that “consumers donot associate the title ‘Ugliest House in America’ with a specific source.” 

The well-recognized problems with trademark useinquiries—necessary as they may be—are on full display here, especially since “useto describe the nature of the show” gives people reasons to watch the show orparticipate in the show. That is, descriptive use can promote the show! Thus it is very difficult to disentangle from“trademark use.”

The same reasons prevented summary judgment on descriptivefair use.

The court also rejected WBD’s trademark misuse/unclean handsdefense, because asserting trademark rights, even if unjustifiably, doesn’tconstitute misuse or unclean hands.

Confusion: There was a genuine dispute because there was “somevisual similarity, including the emphasis on UGLIEST HOUSE,” and similarity isthe most important factor. 

In addition, there was evidence that could be actualconfusion evidence, though WBD disputed its meaning. Specifically, HomeVestorsargued that the National Association of Realtors confused the names of WBD’sshow and HomeVestors’ contest” and that “one of HomeVestors’ own marketingvendors confused the names of WBD’s show and HomeVestors’ contest.”

Finally, intent was disputed, because “WBD’s predecessorentity published an article on HGTV’s website ... discuss[ing] HomeVestors andits famous ‘We Buy Ugly Houses’ billboards[,]” and that “[i]n November 2020,the title clearance report provided by [the production company WBD hired] to WBD—beforethe show premiered—identifies HomeVestors UGLY HOUSES marks.” Althoughknowledge of the mark alone is insufficient, the fact that WBD’s productioncompany explored a collaboration with HomeVestors “could plausibly suggest thatWBD sought to trade on HomeVestors’ goodwill.”

Even though there’s no way HomeVestors’ marks are householdnames among the general consuming public, the court also denied summaryjudgment on dilution, holding that the parties just repeated their arguments onconfusion.  

The court also left disgorgement for trial (that bench trialhas now occurred) as well as objections to proposed expert testimony. Issues ofintent and delay were contested for disgorgement. For the expert testimony, Inoted WBD’s objection to testimony that the houses featured on UHIA would makefor good HomeVestors purchases, and thus that the parties compete. WBD argued,in my view correctly, that (in this specific context) this claim wasn’trelevant to the issue of confusion. “[W]hether the parties compete at all mightbe probative of whether they compete in the minds of consumers.” In the TV showv. home flipper situation, though, whether the houses were actually suitablefor both parties’ purposes doesn’t seem connected to whether reasonable consumerswould think that HomeVestors operates or endorses a TV show.