Chapter 7: Confusion

Question 1

Confusion: 32

Answer 1

Applies to registered TM rights “trademark infringement” cause of action
1. the P owns a valid, registered mark – must also have priority of use;
2. the D is engaged in unauthorized use of the mark; AND
3. that use causes likelihood of confusion

Question 2

Confusion: 43(a)

Answer 2

Applies to unregistered TM rights “false designation of origin” or “common law trademark infringement” cause of action
1. the D is engaged in unauthorized use of mark
2. the P owns valid rights in the mark, must also have priority of use; AND
3. the D’s use causes a likelihood of confusion

Question 3

Confusion: for infringement and unfair competition

Answer 3

P must prove:
1. it owns the asserted mark;
2. the mark is valid and legally protectable; AND
3. D’s use of the mark to identify goods or services is likely to create confusion

• if mark is registered – registrant enjoys benefit of initial presumption of (1) and (2)
• if mark is incontestable – further benefits accrue
• if mark is unregistered – registrant must produce evidence for (1) (2) (3)

Question 4

Borden Ice Cream v. Borden’s Condensed Milk

Answer 4

1. Without actual competition between the mark holder and an alleged infringer, the holder can’t invoke the doctrine of unfair competition
2. Borden’s had a property right in name covering ONLY canned milk products: not an absolute right to the name and cannot stop another business from using name to sell other products
3. Ice cream vs. condensed milk are NOT COMPETITORS so no damage and no ACTUAL competition; does not confuse consumers
4. Takeaway: Whether defendant’s actions are likely to deceive consumers is not the fundamental question in an unfair competition matter. Instead, evidence of consumer deception is relevant only insofar as it may prove that the defendant diverted customers away from the TM owner, resulting in actual lost sales—this is the true basis for a remedy
5. HOWEVER: these views have been reject by the time Congress enacted Lanham Act because these are “related goods” i.e. the TM owner’s goods do not necessaily compete with the alleged infringer’s goods

Question 5

Fleischmann Distilling v. Maier Brewing

Answer 5

1. Different than Borden: don’t have to be competitors
2. Lanham Act eliminated requirement that the infringer’s goods be of the same descriptive properties as the mark’s owner’s
3. Looked at factors such as:
   * D’s intent to trade off P’s goodwill (D capitalized off P’s popularity)
   * the strength of the P’s mark
   * the fact that the relevant purchasers were “unskilled” members of the general public who would rely on generaly impressions in selecting products
4. Professor: not only does it not have to be the same product, but because they do not have to be competitors, we are not thinking beer v. scotch, but would a consumer believe beer company has expanded to scotch, and thus, they are related?

Question 6

Multi-factor test

Answer 6

characteristics found in ALL of the tests:
1. similarity of the marks
2. strength of P’s marks
3. relatedness of the products/services (competitive proximity)
4. D’s intent (good faith)
5. actual confusion
6. purchaser care/purchaser sophistifaction

Question 6

The Factors Analysis for Likelihood of Confusion

Answer 6

1. likelihood of confusion analysis is inherently forward-looking; standard is a prediction about the future: not a problem for injunction cases; but for damages must prove actual confusion
2. analysis extends beyond confusion as to source of origin, extending to confusion as to affiliation or sponsorship as well (more broad interpretation)
3. claims of likely confusion need not necessarily be limited to acts that occur at purchase: i.e. pre-sale, post-sale, and those who are not purchasers are viable as well

Question 6

Virgin Enterprises v. Nawab

Answer 6

Polaroid factors:
1. the strength of the plaintiff’s mark
2. the similarity of D’s mark to the plaintiff’s mark
3. the geographical proximity of the parties’ sales
4. the likelihood that the plaintiff will begin selling the same types of products that defendant sells under the simlar mark
5. actual confusion among consumers AND
6. consumer sophistication

Extra:
* the likelihood that P will bridge the gap by selling the products being sold by D
* the junior user’s (D’s) good faith (D should have known) in adopting its own mark (neutral)
* the quality of D’s product

Question 7

McDonald’s Corp. v. Druck and Gerner McDental

Answer 7

1. Use of an allegedly infringing mark constitutes infringement if it’s likely to cause confusion regarding the mark’s source for the purchasing public
2. Family of marks: to prove that a mark family exists, a mark owner must show that it owns a group of marks having a recognizable common feature where:
   * the group of marks is used and promoted together in such a way that the public associates the common feature with the mark owner AND
   * the common feature is distinctive

Extra:
* fame plays a huge role and it can win an infringement suit
* in any other case, D should assert that the goods sold are not alike

Question 8

Libman v. Vining

Answer 8

1. Actual confusion: either consumers are confused at the point of sale, or they become confused later and this carries over to the next time they are in the market for the product (no mere speculation that consumer might be confused or mislead without supporting evidence)
2. Likelihood of confusion can be found even in absence of any evidence of actual confusion–only required if seeking damages for PAST infringement
3. Here, court simply not persuaded by LOF without evidence of actual confusion

Question 9

Similarity factor: R3d 21

Answer 9

The degree of similarity between the respective designations, including a comparison of:
1. the overall impression created by the designations as they are used in marketing the respective goods or services or in identifying the respective businesses
2. the pronounciation of the designations
3. the translation of any foreign words contained in the designations
4. the verbal translation of any pictures, illustrations, or designs in the designations
5. the suggestions, connotations, or meanings of the designations

Question 10

DuPont Factors

Answer 10

1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression
2. The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use
3. The similarity or dissimilarity of established, likely-to-continue trade channels
4. The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing
5. The fame of the prior mark (sales, advertising, length of use)
6. The number and nature of similar marks in use on similar goods
7. The nature and extent of any actual confusion
8. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion
9. The variety of goods on which a mark is or is not used (house mark, family mark, product mark)
10. The market interface between applicant and the owner of a prior mark
11. The extent to which applicant has a right to exclude others from use of its mark on its goods
12. The extent of potential confusion, i.e. whether de minimis or substantial
13. Any other established fact probative of the effect of use

Question 11

Strength factor

Answer 11

Courts have identified two types of mark strengh:
1. Conceptual strength: referring to the degress of distinctiveness
2. Market strength: referring to the degree of actual recognition in the marketplace

Mark strength factor i.e. mark fame, is the dominant factor in likelihood of confusion analysis

Question 12

Intent factor

Answer 12

1. intent is always difficult to prove and is usually a matter of inference and/or presumption
2. intent based standards do not play a major role in TM law

Question 13

Buyer sophistication factor/reasonably prudent purchaser

Answer 13

1. courts assume a greater level of prudence and care on the part of the customer where the goods are expensive, and a lower level of care where the goods are inexpensive
2. “reasonably prudent purchaser” standard: majority in US assume a common buyer class
3. professional buyers are more knowledgable and better able to discriminate among suppliers, thus reducing the likelihood of confusion for any given purchase
4. courts should not assess confusion through the eyes of the general public when the relevant consumers of the goods or services are specialists

Question 14

Actual confusion factor

Answer 14

1. actual confusion is not a requirement for TM confusion, only a likelihood of confusion
2. a TM owner who seeks damages must show actual confusion
3. TM owners often present surveys as circumstantial evidence of actual confusion, and generally call experts to testify as to the survey methodology
4. courts have considered confusion level as low as 8.5% to constitute good evidence of confusion; some courts consider 15% level to be strongly indicative of confusion

Question 15

Relatedness of goods factor/channels of trade/bridging the gap

Answer 15

1. the evolution of judicial thinking about the “relatedness of goods” factor is one of the more important transitions in the law of trademark infringement over the past century
2. Borden: actual competition is not essential but deception of public is important
3. Relatedness in non-competing goods

Question 16

Post-sale confusion

Answer 16

1. occurs when use of a TM leads individuals (other than the purchaser) mistakenly to believe that a product was manufactured by the TM holder
2. Lanham Act is not restricted to consumers: covers public confusion and TM’s good will
3. quality or desirability of the mark can be affected/reputation of the company may suffer
4. Counterfeits and knockoffs can harm the public and the original manufacturer (decreases value and public is deceived)

Question 17

Ferrari v. Roberts

Answer 17

1. Trademark protection extends to confusion beyond the point of sale and beyond actual customers.
2. Lanham Act protects unregistered trade dress if it’s so distinct that mere appearance identifies the product’s source to consumers (secondary meaning)
3. Secondary confusion same as post-sale confusion
4. post-sale is analyzed on a case by case basis
5. Confusion can occur at any time after product hits market

Question 18

Initial interest confusion

Answer 18

1. Applies when allegedly improper use of a TM attracts potential purchasers to consider products or services provided by the infringer
2. Affects actual purchaser of a product or service NOT a third party
3. Seller has gained an opportunity to make sale by trading on goodwill associated with TM
4. On internet is determined by relatedness of goods and level of care; competition should be a prereq
5. Uses bait and switch technique
6. Disclaimers are inadequate

Question 19

Multi Time Machine v. Amazon.com

Answer 19

1. Clearly labeling the results of an online search with the name and manufacturer of each product eliminates the likelihood of consumer confusion–Amazon’s search had clear labeling
2. IIC: confusion as to a product’s origin earlier in the shopping process might also constitute TM infringement
3. Bait and switch: attracts customer’s attention to products made by a different manufacturer
4. Unfairly capitalizes on the goodwill associated with that mark

Question 20

Reverse confusion

Answer 20

1. DIRECT confusion occurs when a junior user of a mark is said to free ride on the reputation and good will of the senior user by adopting a similar or identical mark
2. REVERSE confusion occurs when the junior user saturates the market with a similar trademark and overwhelms the senior user rather than trying to profit from senior user’s mark
3. Junior user engages in such extensive promotion of goods under a mark that the market is swamped resulting in false association
4. TEST: whether there is a likelihood of confusion as to the source or sponsorship of a product

Question 21

A&H Sportswear v. Victoria’s Secret

Answer 21

1. Reverse confusion is a valid basis for a trademark-infringement claim under the Lanham Act.
2. Reverse confusion occurs if consumers incorrectly think a later, or junior, trademark user is the source of the prior, or senior, trademark user’s products or services.
3. Reverse confusion typically occurs if the junior user is a much larger or better-known producer than the senior user.
4. Reverse-confusion claims exist to prevent big companies from stealing marks or brands from existing, smaller companies.

Question 22

IIC: 3 types of harm

Answer 22

1. original diversion of prospective customer’s interest to a source that he erroneously believes is authorized
2. potential consequent effect of that diversion on the customer’s ultimate decision whether to purchase caused by an erroneous impression that two sources of a product may be associated
3. initial credibility that the would-be buyer may accord to the infinger’s products–customer consideration that otherwise may be unwarranted and that may be built on the strength of the protected mark, reputation, and goodwill (lose the quality of the goods)

Question 23

Reverse confusion: factors

Answer 23

1. Similarity of Marks 2. Strength of Mark, Weighing Both a Commercially Strong Junior Mark and a Conceptually Strong Senior Mark in Senior’s Favor 3. Price of Goods and other Factors Indicative of Care and Attention Expected of Consumers When Making a Purchase 4. Length of Time Junior User has Used Mark w/out Actual Confusion 5. Intent of ∆ in Adopting Mark 6. Evidence of Actual Confusion 7. Whether Goods, Competing or Not Competing, are Marketed through Same Channels of Trade and Advertised in Same Media 8. Extent to Which Target of Parties’ Sales Efforts are Same 9. Relationship of Goods in Minds of Consumers, whether b/c of Near-Identity of Products, Similarity of Function, or other factors 10. Other Factors Suggesting Consuming Public Might Expect Larger, More Powerful Company to Manufacture Both Products