Government-Issued License Plates as “Goods” Under the Lanham Act and the Survival of Personal-Capacity Trademark Claims Against Puerto Rico Officials

1. Introduction

Clemente Properties, Inc. v. Pierluisi-Urrutia (1st Cir. Jan. 16, 2026) arises from Puerto Rico’s use of Roberto Clemente’s name and image—claimed by his sons and family-controlled entities as protected trademarks—on commemorative license plates and registration tags, and in fundraising for a new “Roberto Clemente Sports District.”

The plaintiffs (Roberto Clemente’s sons and their corporations, Clemente Properties, Inc. and 21 In Right, Inc.) alleged that Puerto Rico’s enactments and related public messaging caused consumer confusion and reputational harm by implying family endorsement and/or diverting value from their licensing program. They sued the Commonwealth, several Commonwealth officials, and the Puerto Rico Convention Center District Authority, asserting Lanham Act claims (15 U.S.C. §§ 1114(1), 1125(a)(1)(A), 1125(a)(1)(B), 1125(c)) and a Takings Clause claim.

The district court dismissed across the board. On appeal, the First Circuit largely affirmed, but vacated dismissal of certain Lanham Act claims against the individual Commonwealth officials in their personal capacities.

Key issues:

Whether government-issued license plates and registration tags can qualify as “goods or services” for Lanham Act coverage.
Whether plaintiffs plausibly alleged Lanham Act “false association” (including false endorsement) and related harms.
Whether alleged trademark infringement can be framed as a “categorical” taking of property under the Fifth Amendment.
How sovereign immunity, Ex parte Young, and qualified immunity shape remedies and defendants.

2. Summary of the Opinion

The First Circuit held that the district court erred in treating license plates and registration tags as categorically outside trademark law and in concluding that governmental issuance cannot be “commercial use” under the Lanham Act. The complaint plausibly alleged use of Clemente’s name and image “in connection with goods or services,” at least as to commemorative plates and tags.

The court:

Vacated and remanded dismissal of Lanham Act claims under 15 U.S.C. §§ 1114(1), 1125(a)(1)(A), and 1125(c) against the individual officials in their personal capacities.
Affirmed dismissal of:
- the Lanham Act false advertising claim under § 1125(a)(1)(B) (waiver/insufficient briefing on “commercial advertising or promotion”),
- the Takings Clause claim (trademark infringement is not a per se physical taking; no categorical regulatory taking pled),
- all claims against the Authority (appellate waiver and insufficient developed arguments), and
- all Lanham Act claims for damages against the Commonwealth and officials in their official capacities due to sovereign immunity.

A partial dissent by Chief Judge Barron would have affirmed dismissal of the personal-capacity Lanham Act claims as well, reading the district court as dismissing on qualified immunity grounds and emphasizing the lack of clearly established law about Lanham Act “commercial use” in the governmental license-plate context.

3. Analysis

3.1. Precedents Cited

A. Pleading posture, Rule 12(b)(6), and affirmative defenses

Aresty Int'l L. Firm, P.C. v. Citibank, N.A. — used for the Rule 12(b)(6) posture and taking facts as alleged.
In re Fin. Oversight & Mgmt. Bd. for P.R. and Ponsa-Rabell v. Santander Sec. LLC — plausibility standard.
Zenon v. Guzman, Santana-Castro v. Toledo-Dávila, Haley v. City of Bos. — affirmative defenses may be resolved at 12(b)(6) if apparent on the face of the pleadings.
Parella v. Ret. Bd. of R.I. Emps.' Ret. Sys. — sovereign immunity need not be decided before other dispositive issues; influenced the panel’s sequencing (merits first, then immunities).

B. Lanham Act “goods or services” and commerciality

The court rejected the district court’s categorical exclusion of government-issued plates/tags from trademark law and leaned on broadly framed “services” precedents:

United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc. — “services” include non-profit/political civic benefits; supports broad meaning of “services.”
Lamparello v. Falwell — courts reluctant to define “use in connection with goods or services” narrowly.
Radiance Found., Inc. v. NAACP and LegalForce RAPC Worldwide, PC v. LegalForce, Inc. — dictionary/UCC-inflected definitions of “goods” and “services.”
License-plate trademark disputes cited without questioning “goods” status:
- Au-Tomotive Gold Inc. v. Volkswagen of Am., Inc.
- Cumulus Media, Inc. v. Clear Channel Commc'ns, Inc.
- Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev. (a government defendant using a slogan on plates; the court treated the program as connected to tourism services).
The panel rejected a competition requirement, distinguishing the district court’s reliance on Utah Republican Party v. Herbert and explaining that trademark law is not limited to directly competing goods, citing:
- Beacon Mut. Ins. v. OneBeacon Ins. Grp.
- Team Tires Plus, Ltd. v. Tires Plus, Inc.
- Halicki Films, LLC v. Sanderson Sales & Mktg.

The court also explained that the district court’s reliance on First Amendment license-plate cases—Walker v. Tex. Div., Sons of Confederate Veterans, Inc. and Perry v. McDonald—did not resolve whether plates are “goods/services” for Lanham Act purposes (at most, they might bear on likelihood of confusion).

C. False association, false endorsement, and the “persona as mark” line

Lexmark Int'l, Inc. v. Static Control Components, Inc. — zone-of-interests and proximate cause; the panel held reputational harm can satisfy “commercial interest in ... business reputation.”
Beacon Mut. Ins. v. OneBeacon Ins. Grp. — reputational injury and goodwill are cognizable commercial injuries; also provides the First Circuit’s likelihood-of-confusion factor test.
Pirone v. MacMillan, Inc. — the Babe Ruth calendar case; used by the district court to negate confusion and trademarkability of images. The panel limited Pirone to its compilation context and found confusion plausibly alleged here.
ETW Corp. v. Jireh Publ'g, Inc. — invoked by the district court; the panel distinguished the impermissible “sweeping” image-right theory from a plausible false endorsement theory.
False endorsement authorities: Souza v. Exotic Island Enters., White v. Samsung Elecs. Am., Inc., Fifty-Six Hope Rd. Music, Ltd. v. A.V.E.L.A., Inc., Facenda v. NFL Films, Inc., plus the First Circuit’s own prior brushes with the theory (McBee v. Delica Co.; Ji v. Bose Corp.).

D. False advertising and “commercial advertising or promotion”

Cashmere & Camel Hair Mfrs. Inst. v. Saks Fifth Ave. — elements of false advertising.
Podiatrist Ass'n v. La Cruz Azul De P.R., Inc. — First Circuit test for “commercial advertising or promotion”; the panel affirmed dismissal largely because appellants did not engage this requirement on appeal.
Rocket Learning, Inc. v. Rivera-Sánchez — commercial speech definition (cited in the opinion’s discussion of why appellants’ briefing was inadequate).

E. Takings doctrine and intangible property

Tahoe-Sierra Pres. Council, Inc. v. Tahoe Reg'l Plan. Agency — physical vs regulatory takings framework.
Lucas v. S.C. Coastal Council — categorical regulatory taking requires deprivation of all economically beneficial use.
Cedar Point Nursery v. Hassid, Horne v. Dep't of Agric., Loretto v. Teleprompter Manhattan CATV Corp. — per se physical takings; panel refused to extend this categorical physical approach to trademark infringement.
Ruckelshaus v. Monsanto Co. and Keystone Bituminous Coal Ass'n v. DeBenedictis — Penn Central-style analysis and proportionality/value-remaining logic; the panel emphasized the need for “measured” analysis rather than per se treatment.
Jim Olive Photography v. Univ. of Houston Sys. (Texas Supreme Court) — used as persuasive support for the “nonrivalrous” nature of copyright and limits of analogizing infringement to physical occupation.

F. Sovereign immunity, abrogation, Puerto Rico, and Ex parte Young

Alden v. Maine — baseline sovereign immunity principles.
Lewis v. Clarke — sovereign immunity does not protect personal-capacity suits.
Ex parte Young and Greenless v. Almond — prospective injunctive relief exception; the panel held appellants waived a Sports District–focused Ex parte Young argument by not raising it below.
Puerto Rico’s state-like immunity: Miya Water Projects Netherlands B.V. v. Fin. Oversight & Mgmt. Bd. for P.R., Borrás-Borrero v. Corporación del Fondo del Seguro del Estado, Toledo v. Sánchez.
Clear statement rule: Fin. Oversight & Mgmt. Bd. for P.R. v. Centro de Periodismo Investigativo, Inc., Lac du Flambeau Band of Lake Superior Chippewa Indians v. Coughlin.
Lanham Act abrogation analogues (fatal to plaintiffs’ abrogation theory): Fla. Prepaid Postsecondary Educ. Expense Bd. v. Coll. Sav. Bank, Allen v. Cooper, and the Lanham-specific companion Coll. Sav. Bank v. Fla. Prepaid Postsecondary Educ. Expense Bd. — Congress’s attempted IP abrogations fail congruence/proportionality under § 5 of the Fourteenth Amendment absent a record of unconstitutional deprivations and tailoring to intentional/reckless conduct or lack of state remedies.
Puerto Rico “territory” parsing and differential-treatment caution: Jusino Mercado v. Puerto Rico and Cordova & Simonpietri Ins. Agency, Inc. v. Chase Manhattan Bank.

G. Qualified immunity and waiver

Rivas-Villegas v. Cortesluna, White v. Pauly — clearly established right standard.
Iacobucci v. Boulter — qualified immunity is claim-specific; insufficient to raise it as to one claim and later expand.
Gomez v. Toledo — qualified immunity is an affirmative defense; the defendant bears the burden to invoke.
Haidak v. Univ. of Mass.-Amherst and Buenrostro v. Collazo — waiver/forfeiture of qualified immunity arguments not properly raised below.

3.2. Legal Reasoning

A. The “goods or services” threshold: government-issued plates are not categorically exempt

The panel’s most concrete doctrinal move was to disentangle “governmental” from “non-commercial” for Lanham Act purposes. The district court treated issuance of plates/tags as a “clear government activity” beyond trademark law. The First Circuit rejected that categorical carve-out: the complaint alleged an exchange of money for commemorative plates/tags bearing Clemente’s name and image, which plausibly places the use “in connection with goods or services.”

Two important subtleties follow:

The panel did not decide ultimate liability or likelihood of confusion for § 1114 or dilution; it held only that the pleading-stage “goods/services” gatekeeping rationale used below was erroneous.
The opinion cautioned against importing First Amendment “government speech” license-plate holdings (Walker, Perry) into the separate Lanham Act “goods/services” inquiry.

B. Section 1125(a)(1)(A): the court reframes the claim as plausible false endorsement/association

The panel corrected two narrowing moves in the district court:

Zone of interests: The district court read Lexmark as requiring withheld trade; the panel emphasized Lexmark’s text (“sales or business reputation”) and held reputational/goodwill injury can suffice, citing Beacon Mut. Ins. v. OneBeacon Ins. Grp..
“No claim based on image”: While the panel agreed the complaint did not plausibly plead an unregistered trademark in a specific Clemente photograph under Pirone v. MacMillan, Inc., it refused to affirm dismissal because § 1125(a)(1)(A) plausibly supports a false endorsement theory—where the “mark” is the identity/persona—recognized in other circuits (Souza, White, Fifty-Six Hope, Facenda).

On likelihood of confusion, the panel stressed the Rule 12 posture and credited allegations of actual public confusion (people believed the family benefited and attacked them publicly), distinguishing Pirone as a compilation case where Ruth was “one ballplayer among many.”

C. Section 1125(a)(1)(B) false advertising: dismissal affirmed on appeal waiver

Even while disagreeing with certain district-court moves elsewhere, the panel affirmed dismissal of false advertising because appellants failed to meaningfully address the requirement that the challenged statements occur in “commercial advertising or promotion,” as framed in the First Circuit by Podiatrist Ass'n v. La Cruz Azul De P.R., Inc.. This is a pragmatic appellate holding: the panel treated the deficiency as waived, not as an occasion to reshape the doctrine.

D. Takings: trademark infringement is not treated as a per se physical taking

Plaintiffs attempted to recharacterize alleged trademark infringement as a “categorical” taking based on “the right to exclude,” invoking Cedar Point Nursery v. Hassid and other physical-occupation cases. The panel refused the analogy, emphasizing:

Physical-takings per se rules are anchored in actual physical occupation/dispossession (Loretto, Horne, Cedar Point).
Trademark rights are not “ousted” in the same way by an infringing use; the owner retains the mark, can license it, and can sue infringers.
Trademark rights have “background limitations” and are not “rights in gross,” citing Bos. Athletic Ass'n v. Sullivan and related trademark-property cautions.

The panel did not foreclose all intangible-IP takings theories; it simply held that plaintiffs’ categorical/per se framing failed, and plaintiffs did not pursue a developed Penn Central-style regulatory takings theory on appeal.

E. Sovereign immunity: official-capacity damages barred; Lanham Act abrogation not established as to Puerto Rico

The panel’s sovereign-immunity analysis has two distinct strands:

Official-capacity damages: barred by Puerto Rico’s state-like sovereign immunity (consistent with circuit precedent).
Lanham Act abrogation arguments: plaintiffs failed to carry the burden to show valid Fourteenth Amendment § 5 abrogation under the congruence-and-proportionality analysis of Fla. Prepaid Postsecondary Educ. Expense Bd. v. Coll. Sav. Bank and Allen v. Cooper. The panel also rejected the attempt to use 15 U.S.C. § 1122(a) (federal waiver) plus § 1127’s “United States” definition to reach Puerto Rico, finding the text not “unmistakably clear” under Fin. Oversight & Mgmt. Bd. for P.R. v. Centro de Periodismo Investigativo, Inc. and Lac du Flambeau Band of Lake Superior Chippewa Indians v. Coughlin.

The Ex parte Young avenue for prospective relief was not adopted here because the panel deemed the Sports District–focused Ex parte Young theory waived for not being presented below.

F. Qualified immunity: not reached (waiver), creating a notable remand posture

The majority held qualified immunity was not properly invoked as to the surviving Lanham Act claims at the motion-to-dismiss stage because the Commonwealth Defendants framed qualified immunity only around the false advertising “commercial advertising or promotion” issues. This waiver holding is case-management significant: the remanded claims proceed without a qualified-immunity dismissal at this stage, though the panel expressly left open later assertion (e.g., at summary judgment).

Chief Judge Barron’s partial dissent took a different view of the record and would have affirmed on qualified immunity, stressing the absence of clearly established law that governmental license-plate issuance satisfies the Lanham Act “commercial use” element.

3.3. Impact

Trademark claims against government actors may survive early dismissal when governments monetize commemorative items: The decision rejects a categorical “government activity” exclusion from the Lanham Act and treats state-issued commemorative plates/tags as plausibly within “goods or services.” Plaintiffs in future disputes will likely cite this case to keep § 1114/§ 1125(a)(1)(A)/§ 1125(c) claims alive past Rule 12.
False endorsement is implicitly validated as a viable framing in the First Circuit: While the panel avoided setting “exact boundaries,” it relied heavily on out-of-circuit false endorsement doctrine and refused to affirm dismissal premised on Pirone-style skepticism about images as trademarks. Litigants will likely press for explicit First Circuit adoption of a false endorsement test and tailored likelihood-of-confusion factors on remand and in subsequent cases.
Takings theories based on infringement face strong headwinds: The court’s refusal to import physical-takings per se rules into trademark infringement signals that plaintiffs should expect to litigate IP harms via IP remedies (and possibly due process frameworks), not categorical takings.
Immunity architecture remains outcome-determinative: Official-capacity damages remain largely blocked; plaintiffs must timely develop Ex parte Young theories for prospective relief and must carry heavy burdens to establish valid congressional abrogation for IP claims against sovereigns after Fla. Prepaid and Allen.
Procedural discipline matters: The affirmance of the false advertising dismissal and Authority dismissal rested substantially on waiver and briefing failures, reinforcing that IP claims against public entities require meticulous appellate issue preservation.

4. Complex Concepts Simplified

“Goods or services” (Lanham Act): Trademark law generally targets uses of marks tied to products or services. The court held a state-issued license plate/tag exchanged for money can plausibly be treated as a “good,” even if issued by the government.
Trademark infringement vs. false association vs. false advertising:
- § 1114(1): infringement of a registered trademark.
- § 1125(a)(1)(A): false association (including “false endorsement,” where use of a person’s identity can imply sponsorship/endorsement).
- § 1125(a)(1)(B): false advertising, limited to “commercial advertising or promotion.”
Trademark dilution (§ 1125(c)): protection for famous marks against uses that blur distinctiveness or tarnish reputation, even without classic confusion, typically via injunctive relief (and damages only for willful violations under § 1117(a)).
Zone of interests (Lexmark): not everyone can sue under § 1125(a); the plaintiff must allege a commercial injury (including reputational harm) proximately caused by the defendant’s conduct.
Sovereign immunity: protects Puerto Rico (like a state) and officials in official capacity from damages suits in federal court absent waiver/valid abrogation; personal-capacity suits are not barred.
Ex parte Young: a pathway to prospective injunctive relief against officials to stop ongoing federal-law violations; it does not authorize retroactive damages.
Qualified immunity: shields officials from damages unless they violated clearly established law. Here, the majority treated it as waived at this stage for most claims due to how it was (not) raised.
Categorical taking: per se compensation rules for physical occupation or for regulation that eliminates all economic use. The court refused to treat trademark infringement as a per se physical taking.

5. Conclusion

Clemente Properties, Inc. v. Pierluisi-Urrutia chiefly establishes that a government’s monetized issuance of commemorative license plates and registration tags is not categorically beyond Lanham Act scrutiny: those items may qualify as “goods or services,” allowing registered-infringement, false association/endorsement, and dilution claims to survive dismissal (at least against officials personally, where immunities do not block suit).

At the same time, the opinion underscores that plaintiffs litigating IP disputes against sovereigns must navigate sovereign immunity, timely develop Ex parte Young theories for prospective relief, and cannot easily repackage infringement as a categorical taking. The remand posture—Lanham Act personal-capacity claims proceeding while official-capacity and false advertising/takings theories are out—sets the stage for further development of false endorsement doctrine and remedies where the alleged infringer is a public official acting under color of state law.