Ip core presentation likelihood of confusion

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  • 1. Likelihood of Confusion Michael AtkinsAtkins Intellectual Property, PLLC November 9, 2012 1
  • 2. Road Map1. Why likelihood of confusion matters2. Determining likelihood of confusion3. Parody 2
  • 3. Importance of Likelihood ofConfusion• Trademark = source identifier• Trademark owner’s fundamental right: Prevent a likelihood of confusion 3
  • 4. Importance of Likelihood ofConfusion• Basis for refusal of registration − Section 2(d) − Supports opposition or cancellation proceedings• Basis for lawsuit − Section 32(1) – Infringement of registered mark − Section 43(a) – Infringement of unregistered mark or false designation of origin 4
  • 5. Preventing Likelihood ofConfusion Greyhound logo for bus services 5
  • 6. Preventing Likelihood ofConfusion VANS and VEENS for shoes 6
  • 7. Prima Facie Case1. Valid trademark rights2. Priority - First user generally wins3. Likelihood of confusion 7
  • 8. Likelihood of Confusion Theories• Concept introduced in Gibson Guitar v. Paul Reed Smith Guitars• Forward confusion• Reverse confusion• Initial interest confusion• Post-sale confusion• “Smoky bar” theory of confusion 8
  • 9. Forward Confusion• Ordinary confusion − Sometimes called “point of sale” confusion• Consumer mistakenly associates junior user’s mark with that of the well-known senior trademark − E.g., use of YALE for flashlights and batteries held to infringe the well-known YALE mark for locks and keys − What cases reflected this theory? 9
  • 10. Reverse Confusion• Consumer deals with senior mark owner mistakenly believing it is doing business with the junior one• Occurs when junior user saturates the market with a similar TM and overwhelms the senior user 10
  • 11. Reverse Confusion• Junior user does not seek to profit from the goodwill associated with the senior user’s mark − But senior user loses value of TM in process − E.g., MIRACLE SUIT for swimwear• Designed to prevent a larger, more powerful junior user from usurping the business identity of a smaller senior user 11
  • 12. Initial Interest Confusion• Consumer seeks a particular TM holder’s product and instead is lured to the product of a competitor by the competitor’s use of the same or similar mark• Even though customer may realize the product is not the one originally sought, she may stay with the competitor − E.g., Sign on highway: “McDonald’s next exit,” with off ramp leading to Burger King − Gibson Guitar v. Paul Reed Smith Guitars 12
  • 13. Initial Interest Confusion• Disfavored• Common on Internet (e.g., keyword advertising) − Unauthorized use of TM diverts Internet traffic to defendant’s site, thereby capitalizing on TM owner’s goodwill• Is temporary advantage enough to create a likelihood of confusion?• Gibson Guitar’s treatment 13
  • 14. Post-Sale Confusion• Senior user’s potential purchasers might mistakenly associate the inferior quality work of the junior user with the senior user and, therefore, refuse to deal with the senior user in the future − E.g., Infringer builds kits that make Corvettes look like far-more expensive Ferraris, making Ferrari cars seem more common and lower quality than they actually are − Counterfeit good is inferior to authentic good − Gibson Guitar’s treatment 14
  • 15. “Smoky Bar” Confusion• Novel theory derided in Gibson Guitar Corp. v. Paul Reed Smith Guitars• Potential purchaser sees musician playing Paul Reed Smith guitar and thinks it is a Gibson guitar• Theory rejected, because any alleged confusion benefits Gibson, the party claiming to be injured 15
  • 16. Likelihood of Confusion Factors1. Similarity of the marks2. Similarity of the goods3. Strength of plaintiff’s mark4. Evidence of actual confusion5. Marketing channels used6. Type of goods and degree of care purchaser is likely to exercise 16
  • 17. Likelihood of Confusion Factors7. Defendant’s intent in selecting the mark8. Likelihood of expansion of the product lines• Mixed question of law and fact, but is mostly factual 17
  • 18. 1. Similarity of Marks• Sight, sound, meaning test − Do the marks look alike? − Do the marks sound alike? − Do the marks have the same meaning?• Courts put more weight on similarities than differences 18
  • 19. 2. Similarity of Goods• Whether consumers will assume that junior user’s product is associated with the senior user• Where goods are related or complementary, the danger of consumer confusion is increased − Do the products compete? − If not, are they close in use or function? 19
  • 20. 3. Strength of Plaintiff’s Mark• Mark’s ability to identify source Inherently Distinctive Not No Inherently Distinctiveness Distinctive No Secondary Meaning Secondary No Required Meaning Trademark Required Significance Arbitrary Suggestive Descriptive, Generic And Geographic, Fanciful Personal Name 20
  • 21. 3. Strength of Mark• Technical strength considered• Practical strength considered• Greater protection for strong marks; less protection for weaker marks 21
  • 22. 4. Evidence of Actual Confusion• Have any consumers actually been mislead by the similarity of the two marks?• Evidence of actual confusion is persuasive proof that future confusion is likely − Misdirected mail, complaints − Surveys 22
  • 23. 4. Evidence of Actual Confusion• Absence of actual confusion need not create inference that no likelihood of confusion exists − However, long coexistence, coupled with no evidence of actual confusion, can signal confusion is not likely 23
  • 24. 5. Marketing Channels Used• Convergent marketing channels increase the likelihood of confusion − Are goods sold under same roof? − Do parties use the same distributor? − Do parties advertise to the same prospective customers? 24
  • 25. 6. Type of Goods/Degree of Care• Usual standard = typical buyer exercising ordinary caution• Sophisticated buyer makes confusion less likely• With expensive good, consumer is assumed it will use greater care − With inexpensive good, consumer relies more on brand name, making confusion more likely 25
  • 26. 7. Defendant’s Intent in Selecting Mark• Is defendant trying to trade on plaintiff’s goodwill? − Defendant’s awareness of plaintiff’s mark can signal bad faith  Particularly for fanciful mark, court will wonder why defendant selected mark so close to plaintiff’s mark. Only explanation may be defendant’s motivation to trade on plaintiff’s goodwill − Reliance on advice of counsel can signal defendant’s good faith − Descriptive mark can signal good faith 26
  • 27. 8. Likelihood of Expansion ofProduct Lines• A “strong possibility” that either party may expand its business to compete with the other weighs in favor of finding that present use is infringing − e.g., Shoes and socks 27
  • 28. Evaluating the Factors• Analysis is not a mechanical measurement, where most factors wins• Courts focus on the ultimate question of whether consumers are likely to be confused• No one factor is necessarily dispositive, but any one factor may prove to be so 28
  • 29. Tests for Likelihood of Confusion• Sleekcraft Factors – Ninth Circuit − Gallo v. Gallo Nero• Polaroid Factors – Second Circuit − CBS v. Liederman• SquirtCo Factors – Eighth Circuit − Anheuser-Busch v. Balducci Publications• DuPont Factors – Federal Circuit• Other circuits have other “multi-factor” tests 29
  • 30. Likelihood of Confusion in Context• CBS Inc. v. Liederman, 866 F.Supp. 763 (S.D.N.Y 1994)• How would you analyze the likelihood of confusion? 30
  • 31. Likelihood of Confusion in Context• Similarity of marks? Similarity of goods?• Strength of plaintiff’s mark?• Will CBS “bridge the gap?• Any actual confusion?• Liederman’s intent• Sophistication of consumers 31
  • 32. Likelihood of Confusion in ContextLouis Vuitton and Dooney & Bourke purses 32
  • 33. Introduction to Parody• Parody must convey two simultaneous and contradictory messages: that it is the original, but also that it is not the original and instead is a parody − Can’t merely use trademark to get attention  See, e.g., Dr. Seuss Enterprises v. Penguin Books, 109 F.3d 1394 (9th Cir. 1996) 33
  • 34. Introduction to Parody 34
  • 35. Introduction to Parody • Parody uses at least some of the trademark the parodist criticizes • Not a defense to trademark infringement − But, a successful parody avoids likelihood of confusion − Apply likelihood of confusion factors 35
  • 36. Parody in Context: Anheuser-Busch v.Balducci Publications 36
  • 37. Parody in Context: WAL-OCAUST 37
  • 38. Questions? Thank you! Michael Atkins mike@atkinsip.com 38