PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION We believe that, in the context of [an] industrial machine, the typical consumer will not assume that the two manufacturers are associated in some way. Rather, where product configurations are at issue, consumers are generally more likely to think that a competitor has entered the market with a similar product. Dorr-Oliver, Inc. v. Fluid-Quip, Inc ., 94 F.3d 376, 382-83 (7th Cir. 1996). 29
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION [A]ny relevant consumer confusion will likely occur prior to sale, if at all .... The inherently concealed nature of worn underwear diminishes the concern for post-sale confusion…. Munsingwear Inc. v. Jockey Int’l, Inc ., 31 U.S.P.Q.2d 1146, 1150 (D. Minn.), aff’d , 39 F.3d 1184 (8th Cir. 1994). 30
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION The two “directions” of likely confusion: • forward confusion; and • reverse confusion. 31
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co ., 561 F.2d 1365 (10th Cir. 1977) 32
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co ., 561 F.2d 1365 (10th Cir. 1977) 33
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION Masters Software, Inc. v. Discovery Commc’ns , Inc., 725 F. Supp. 2d 1294 (W.D. Wash. 2010) 34
PROVING LIKELY CONFUSION Theodore H. Davis Jr. 404.815.6534 Tdavis@kilpatricktownsend.com
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Test for Likelihood of Confusion In ex parte matters Refusal under Section 2(d) of the Trademark Act in applications for registration filed with the USPTO In inter partes proceedings before the TTAB Notice of Opposition to registration of a trademark application Petition to Cancel a federal registration In Civil Actions Trademark infringement 37
Du Pont Factors In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973) (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. 38
Du Pont Factors In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973) (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: (a) a mere "consent" to register or use. (b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party. (c) assignment of mark, application, registration and good will of the related business. (d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion. (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. 39
Du Pont Factors • Two-Prong Test – The Marks • Appearance • Sound • Meaning • Overall Commercial Impression – Goods/Services • Same or related • As described in the application and registration • Reasonable Person Test 40
Applying Du Pont Factors 41
Applying Du Pont Factors 42
Factors Vary by Jurisdiction 2 nd Cir – Polaroid Test Polaroid Corporation v. Polarad Electronics Corporation, 287 F.2d 492, 128 U.S.P.Q. 411 (2d Cir. 1961) (1) the strength of [plaintiff's] mark, (2) the degree of similarity between the two marks, (3) the proximity of the products, (4) the likelihood that the prior owner will bridge the gap, (5) actual confusion, (6) the reciprocal of defendant's good faith in adopting its own mark, (7) the quality of defendant's product, (8) and the sophistication of the buyers 43
Factors Vary by Jurisdiction 4th Cir- Pizzeria Uno Pizzeria Uno Corp. v. Temple , 747 F.2d 1522, 1527, 224 U.S.P.Q. 185 (4th Cir. 1984) (1) the strength or distinctiveness of the mark; (2) the similarity of the two marks; (3) the similarity of the goods/services the marks identify; (4) the similarity of the facilities the two parties use in their businesses; (5) the similarity of the advertising used by the two parties; (6) the defendant's intent; (7) actual confusion Shakespeare Co. v. Silstar Corp. of Am ., 110 F.3d 234, 242, 42 U.S.P.Q.2d 1266 (4th Cir. 1997); Perini Corp. v. Perini Construction, Inc ., 915 F.2d 121, 127, 16 U.S.P.Q.2d 1289 (4th Cir. 1990) (8) the proximity of the products as they are actually sold; (9) the probability that the senior mark owner will "bridge the gap" by entering the defendant's market; (10) the quality of the defendant's product in relationship to the quality of the senior mark owner's product; and (11) the sophistication of the buyers 44
Weight of Factors Vary Case by Case • The weight of the evidentiary elements are not the same in all cases. As the facts of each case differ so does the weight of the factors. “Rosetta Stone contends that the district court's failure to consider all nine of the traditional likelihood-of- confusion factors was reversible error. We cannot agree. This judicially created list of factors is not intended to be exhaustive or mandatory. See Pizzeria Uno Corp. v. Temple , 747 F.2d 1522, 1527 (4th Cir. 1984) (setting forth factors one through seven); see also Sara Lee Corp. v. Kayser-Roth Corp ., 81 F.3d 455, 463-64 (4th Cir. 1996) (identifying factors eight and nine). These "factors are not always weighted equally, and not all factors are relevant in every case." Louis Vuitton , 507 F.3d at 259-60. In fact, "there is no need for each factor to support [the plaintiff's] position on the likelihood of confusion issue." Synergistic Int'l, LLC v. Korman , 470 F.3d 162, 171 (4th Cir. 2006). Rather, the confusion "factors are only a guide--a catalog of various considerations that may be relevant in determining the ultimate statutory question of likelihood of confusion." Anheuser-Busch, Inc. v. L & L Wings, Inc ., 962 F.2d 316, 320 (4th Cir. 1992). Accordingly, there is no hard and fast rule that obligates the district court to discuss each non-mandatory factor .” Rosetta Stone , Ltd. v. Google Inc., 676 F.3d 144, 153-54 (4 th Cir. 2011) 45
Practice Tips Present evidence based on factors for the Jurisdiction If USPTO, TTAB or Federal Circuit, du Pont factors If civil action, check factors for the particular jurisdiction Remember it is a subjective test determined on a case by case basis Consider the circumstances surrounding the facts in your case Consider whether a reasonable person in your target market would be confused 46
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Assertion of Right to Mark Registration: Prima facie evidence of the validity of the Registered mark Registration of the mark Registrant’s ownership of the mark Registrant’s exclusive right to use the registered mark in commerce on goods/services listed in the registration Incontestable Registration: Conclusive evidence of aforementioned validities 48
Defenses – 15 U.S.C. §1115 • Challenge Registration – Abandonment – Genericide – Fraud • Equitable Defenses – Laches, estoppel and acquiescence • Refute Likelihood of Confusion – Fair use – Senior user 49
Fair Use Classic Fair Use Defendant uses the plaintiff’s mark to describe the defendant’s own product KP Permanent Make-up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 125 S. Ct. 542, 160 L. Ed. 2d 440 (2004) Plaintiff has the burden of proving likelihood of confusion A party raising the statutory affirmative defense of fair use to a claim of trademark infringement does not have the burden to negate confusion 50
Fair Use Nominative Fair Use Definitions: Defendant uses the plaintiff’s mark to identify the plaintiff’ goods where the trademark is the only practical way to refer to the plaintiff Defendant use the plaintiff’s mark to refer to plaintiff’s product in order to better describe defendant’s product or service Types: Comparative advertising Creative works – motion pictures, novels Parody 51
Nominative Fair Use Ninth Circuit – Different Test for Likelihood of Confusion The alleged infringer uses the plaintiff’s trademark to describe plaintiff’s goods or services AND Trademark is needed to describe the plaintiff’s goods/services; Use of mark is reasonably necessary; and User does not suggest sponsorship or endorsement by plaintiff. New Kids on the Block v. News America Pub., Inc ., 971 F.2d 302, 308, 23 U.S.P.Q.2d 1534, 1539 (9th Cir. 1992) 52
Nominative Fair Use Third Circuit – Affirmative Defense Use of the plaintiff’s mark is necessary to describe both the plaintiff’s product and the defendant’s product Defendant uses so much of plaintiff’s mark as necessary to describe plaintiff’s product Defendant’s conduct or language reflect true and accurate relationship between plaintiff and defendant’s products or services Century 21 Real Estate Corp. v. Lendingtree, Inc. , 425 F.3d 211, 76 U.S.P.Q.2d 1769 (3d Cir. 2005) 53
WWW . GOODMANALLEN . COM C HARLES M. A LLEN CALLEN@GOODMANALLEN.COM 804-346-0600 M R . A LLEN ’ S IP P RACTICE INCLUDES : • C LIENT C OUNSELING IN ALL V ARIETY OF IP M ATTERS • P ROSECUTION AND P ORTFOLIO M ANAGEMENT O F P ATENTS AND T RADEMARKS • L ICENSING AND OTHER T RANSACTIONS • P ATENT I NFRINGEMENT A CTIONS • T RADEMARK I NFRINGEMENT A CTIONS • T RADEMARK O PPOSITIONS AND C ANCELLATIONS 54
Proving a Likelihood of Confusion June 6, 2013 Presented by Robert D. Litowitz
A Lifetime of Confusion 56 56
A Lifetime of Confusion 57 57
A Lifetime of Confusion 58 58
A Lifetime of Confusion 59 59
??? 60 60
Proving a Likelihood of Confusion • “[A] question of law based on underlying facts.” In re Coors Brewing Co., 343 F.3d 1340, 1343 (Fed. Cir. 2003) • Trademark owner has burden of proof 61 61
Proving a Likelihood of Confusion • Two categories of “facts” that can be proven – Objective facts — who, what, when, how much? • Documents • Records • Testimony of fact witnesses – Subjective facts —what’s likely to happen • Surveys • Other expert testimony 62 62
Objective Facts: The Theme and Story • Trademark litigation is not unique • A good theme and story spell success 63 63
Theme: Case Study • Bridgestone v. Federal – Issue: Does MILANZA for tires conflict with POTENZA and TURANZA tire marks? 64 64
Bridgestone’s Theme • Its famous tire marks have wide traction • Upstart competitor can’t “draft” on Bridgestone’s goodwill 65 65
Federal’s Theme • Bridgestone doesn’t own “Italian” • POTENZA and TURANZA are secondary to BRIDGESTONE/lack fame 66 66
The Stories • Bridgestone – We spent $ millions, sold $ millions to make POTENZA and TURANZA category leaders – Marks have same cadence, structure, and origin – Federal wants to free-ride on our success through, at least, initial interest confusion • Federal – MILANZA evokes Milan; ZA simply imparts emphasis in Chinese – BRIDGESTONE may be famous, secondary marks aren’t 67 67
The Proofs • Strength of marks – Degree of strength = Degree of protection • Inherent strength: Where do marks fall on the “spectrum?” • Commercial strength: How well do consumers know the mark? 68 68
Proofs: Inherent Strength Fanciful Arbitrary Suggestive Descriptive 69 69
Bridgestone • POTENZA and TURANZA – Unique – Arbitrary – Distinctive – Inherently strong 70 70
Proofs: Commercial Strength • Dollars spent on advertising and promotion • Revenues earned • Number of sales • Length of use 71 71
Bridgestone • POTENZA and TURANZA achieved commercial strength – POTENZA used since 1981 – TURANZA used since 1992 – Sales and advertising “impressive by any standard” – $ billions in sales – Extensive promotion and marketing 72 72
Objective Evidence: Cost of Goods • How much do products at issue cost? – Impulse purchase? – Careful purchase? – Distracted shopper? – Educated consumer? 73 73
Bridgestone • Not all tires are expensive • Consumers buy “on the spot,” adding “impulse” component 74 74
Where Are Goods Sold? • In brick-and-mortar store? • Online? • In same location/trade channel? • In different locations/trade channels? 75 75
Bridgestone • Identical goods (tires) • Identical trade channels (auto stores/tire dealers/garages/dealerships) – Not necessarily sold side-by-side in same stores 76 76
Objective Evidence: Advertising • How and where are goods advertised – Same media? – Different media? 77 77
Bridgestone • Bridgestone used many advertising media – TV – National print – Local print – Billboards – Race sponsorships 78 78
Similarity Goods Marks • Where goods are • Where marks are identical, less similarity in identical, less similarity in marks required goods required 79 79
Bridgestone • Both sides sold tires – Exact identity between the marks not required – MILANZA similar enough to POTENZA and TURANZA in appearance, sound, connotation to create likelihood of confusion • What if: TURANZA for auto tires vs. TURANZA for bicycles? 80 80
Objective Evidence: Intent • What motivated defendant to choose its mark? – Likelihood of confusion may be presumed where defendant deliberately mimicked the plaintiff’s mark • Example: YKK vs. YPP for zippers – Defendant rejected numerous options as not similar enough to YKK 81 81
Objective Evidence: Intent • But choosing mark that calls to mind another’s mark does not necessarily create presumption: No monopoly on two syllable marks with Scandinavian “flair” – Haagen Dazs v. Frusen Gladje, 493 F.Supp. 73 (S.D.N.Y. 1980) 82 82
Bridgestone • Federal knew of POTENZA and TURANZA, but chose similar MILANZA – Violated duty of second-comer to steer clear of competitor’s successful marks 83 83
Objective Evidence: Actual Confusion • The best evidence of the likelihood of confusion, but is not required • Actual confusion evidence can be hard to find • Actual confusion evidence is tricky – Courts sometimes discount or reject it – Absence of actual confusion over time may help defendant 84 84
Actual Confusion: Example • The Fresh Market • Arthur’s Fresh Market 85 85
Actual Confusion: Example • The Fresh Market v. Arthur’s Fresh Market – Fresh Market was incontestable mark for grocery chain – Fresh Market expanded to new state/city - Indy – Local grocer opened Arthur’s Fresh Market ; planned another in Letterman’s old store – Fresh Market and Arthur’s both recorded actual confusion – Court minimized this evidence, denied injunction 86 86
Proving Likelihood of Confusion: Subjective Facts • Given the objective facts — the marks, the products, the purchasers, the trade channels, the advertising, how likely is it or not that confusion will occur? 87 87
Subjective Facts: Experts • Survey Experts • Other experts – To conduct surveys and – Linguists present them – Marketing experts – To critique surveys – Industry experts – Legal experts 88 88
Surveys Testing Likelihood of Confusion • Survey not necessary, especially for flagrant infringement • But – Courts often expect surveys – Lack of survey can hurt – Courts sometime view competing surveys as a “push” 89 89
Survey Fundamentals • Manual of Complex Litigation, Federal Judicial Center Reference Guide on Survey Research – Choose the right people to interview (“the universe”) – Obtain a fair sample – Use qualified interviewers who follow proper procedures – Make questions clear, relevant, non-leading – Analyze and present the results properly and fairly 90 90
Survey Fundamentals: Who to question? • Potential customers likely to be exposed to the marks at issue – Forward confusion —the accused infringer’s customers – Reverse confusion —the trademark owner’s customers • Relevance is the key: questioning the wrong people produces irrelevant results 91 91
Survey Fundamentals: What Should Participants Be Shown? • Survey should strive to replicate real world – Participants should see the marks at issue as they would when deciding what to buy – Survey should avoid biased or misleading presentations • Example — showing two marks side-by-side when they are not sold that way 92 92
Survey Fundamentals: What Questions Should Be Asked • Eveready format – Who do you think makes this product, if you know? – Do you think the maker of this machine offers any other products or services? • If yes, what other products or services? • What makes you think so? – Best for when plaintiff’s mark is well know 93 93
Survey Fundamentals: What Questions Should Be Asked • Squirt format – [After showing first product] Do you think this product is made by the same company as the product I just showed you? – If yes, what makes you think so? 94 94
Survey Fundamentals: Controls • Surveys of likelihood of confusion usually need a control – A “dummy” stimulus to weed out “confusion” caused by guessing or other factors unrelated to similarity of the marks • e.g. “Sandoz” in survey to measure whether “Zeneca” for ag chemicals conflicted with “Seneca” for seeds 95 95
Survey Fundamentals: What Are Good Results • Rule of thumb — 15% or higher – Courts have accepted 10% or lower, where market is large 96 96
Other Experts • Linguists – Can testify about similarity or differences in meaning or sound of marks and strength of marks • e.g. “Whisper quiet” for laundry dryers is descriptive • e.g. “Zeneca” audibly different from “Seneca” • e.g. Similar meanings of “Tornado” and “Cyclone” • e.g. Similarity between “Swedish Fish” and “Squish Fish” • e.g. “Mc” prefix transcends McDonald’s 97 97
Other Experts • Industry expert — how and where products are sold, advertised – e.g. Toys and hobbies sold at different stores – e.g. Internet marketing expert explained that “pay per click” ads generate little brand awareness 98 98
Other Experts • Industry experts ( cont. ) • Who buyers are and how they decide – e.g. purchasers of ladies’ raincoats are careful – Result —no confusion between DRIZZLE for women’s coats and DRIZZLER for golf jackets – e.g. Guitarists use instruments’ head stocks to identify brand – e.g. How much attention do shoppers spend looking at a label 99 99
Other Experts • Legal expert – To explain procedures at the PTO – To explain search procedures – To express opinion on similarity of mark based on PTO experience 100 100
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