Presenting a live 90-minute webinar with interactive Q&A Trademark Confusion: Proving or Defending Against Infringement Addressing Forward, Reverse, Initial Interest, Post-Sale and Affiliation Confusion Challenges TUESDAY, MARCH 29, 2016 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific Today’s faculty features: Theodore H. Davis, Jr., Partner, Kilpatrick Townsend & Stockton , Atlanta Robert D. Litowitz, Partner, Kelly IP , Washington, D.C. Diane J. Mason, Shareholder, LeClairRyan , San Francisco The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10 .
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Trademark Confusion: Forward, Reverse, Initial-Interest, Post-Sale and Affiliation Ted Davis Kilpatrick Townsend & Stockton LLP tdavis@kilpatricktownsend.com
PROVING The Twin Purposes of Trademark Law LIKELY CONFUSION They are: • the protection against confusion in the marketplace; and • the protection of mark owners’ goodwill. * 6
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION They include: • Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d); • Section 32 of the Lanham Act, id. § 1114(1); • Section 43(a) of the Lanham Act, id . § 1125(a); • Section 42 of the Lanham Act, id . § 1124; • the common law; and • most state statutory unfair competition causes of action. * 7
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION Any person who shall, without the consent of the registrant ... use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive ... shall be liable in a civil action by the registrant. 15 U.S.C. § 1114(1). * 8
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION Any person who … uses in commerce any word, term, name, symbol, or device, or any combination thereof, … which …is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person … shall be liable in a civil action …. 15 U.S.C. § 1125(a). * 9
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION Types of actionable likely confusion: • source or origin of the parties’ goods or services; • sponsorship; and • affiliation. * 10
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION A consumer need not believe that the owner of the mark actually produced the item and placed it on the market in order to satisfy § 43(a)’s confusion requirement. The public’s belief that the mark’s owner sponsored or otherwise approved the use of the trademark satisfies the confusion requirement. Famous Horse Inc. v. 5th Ave. Photo Inc ., 624 F.3d 106, 109 (2d Cir. 2010) (internal quotation marks omitted). * 11
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION Univ. of Ga. Athletic Ass’n v. Laite , 756 F.2d 1535 (11th Cir. 1985) * 12
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION D.C. Comics Inc. v. Unlimited Monkey Bus., Inc ., 598 F. Supp. 110 (N.D. Ga. 1984) * 13
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION The timing of actionable likely confusion: • point-of-sale; * 14
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION Possible victims of likely confusion: • end consumers who are: – prudent and not gullible; but also – not necessarily sophisticated; • upstream consumers in the trade; * 15
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION [A]ctual trade confusion is highly probative on the question of whether a likelihood of confusion exists, generally, in the marketplace, since [retailers] may be deemed more sophisticated about the origins and sources of product lines than average consumers. Berkshire Fashions, Inc. v. Sara Lee Corp ., 725 F. Supp. 790, 796-97 (S.D.N.Y. 1989), aff’d , 904 F.2d 33 (2d Cir. 1990). * 16
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION [A plaintiff] need not prove confusion on the part of actual consumers. Prior to 1962, § 32(1)(a) of the Lanham Act, 15 U.S.C. § 1114(1), required confusion, mistake, or deception by “purchasers as to the source or origin of such goods or services.” In 1962, the quoted words were deleted, specifically to allow any kind of confusion in support of a trademark infringement action. Marathon Mfg. Co. v. Enerlite Prods. Corp ., 767 F.2d 214, 221 (5th Cir. 1985) (citation omitted). * 17
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION Possible victims of likely confusion can include: • end lay consumers who are: – prudent and not gullible; but also – not necessarily sophisticated; • upstream consumers in the trade; and, possibly, • anyone. * 18
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION The timing of actionable likely confusion: • point-of-sale; • pre-sale; * 19
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION Initial interest confusion, which is actionable under the Lanham Act, occurs when a customer is lured to a product by the similarity of the mark, even if the customer realizes the true source of the goods before the sale is consummated. Promatek Indus. v. Equitrac Corp ., 300 F.3d 808, 812 (7th Cir. 2002). * 20
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION PEGASUS PETROLEUM Mobil Oil Corp. v. Pegasus Petroleum Corp. , 818 F.2d 254 (2d Cir. 1987) * 21
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION Dr. Seuss Enters. v. Penguin Books USA, Inc ., 109 F.3d 1394 (9th Cir. 1997) * 22
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION In the Internet context, in particular, entering a web site takes little effort – usually one click from a linked site or a search engine’s list; thus, Web surfers are more likely to be confused as to the ownership of a web site than traditional patrons of a brick-and-mortar store would be of a store’s ownership. Brookfield W. Commc’ns Inc. v. W. Coast Entm’t Corp ., 174 F.3d 1036, 1057 (9th Cir. 1999). * 23
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION [T]he default degree of consumer care is becoming more heightened as the novelty of the Internet evaporates and online commerce becomes commonplace .... Network Automation, Inc. v. Advanced Sys. Concepts, Inc ., 638 F.3d 1137, 1152 (9th Cir. 2011). * 24
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION [I]nitial interest confusion is of greatest concern when products are in competition with each other — in those instances, customers may be drawn to a product and identify it with a particular source without realizing until later that it came from elsewhere. Chatam Int’l, Inc. v. Bodum, Inc ., 157 F. Supp. 2d 549, 558 (E.D. Pa. 2001), aff’d , 40 Fed. Appx. 685 (3d Cir. 2002). * 25
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION The timing of actionable likely confusion: • point-of-sale; • pre-sale; and • post-sale. * 26
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION Chrysler Corp. v. Silva , 118 F.3d 56 (1st Cir. 1997) * 27
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