Disclaimers: Can You Really Disclaim Confusion To Avoid Trademark Infringement?
After a mini hiatus (due mainly to the INTA 2017 Annual Meeting madness in Barcelona), the Trademark Well blog posts are back on track. But that doesn’t mean the impact of Barcelona isn’t still being felt. Like in this post’s featured image, for example. It’s a tip of the cap to all those strange figurines that I saw in souvenir shops across Barcelona. In case you don’t know, I’m talking about the Caganer figurines.
Back to trademark law. Let’s talk disclaimers. Do they prevent confusion?
To Be Effective, a Disclaimer Must Be Prominently Featured Near the Trademark
A disclaimer may be effective in eliminating the perception of endorsement or sponsorship when the disclaimer is featured prominently and in close proximity to the plaintiff’s trademark. Lifescan, Inc. v. Shasta Techs., LLC, 2013 U.S. Dist. LEXIS 143510, *27 (N.D. Cal. 2013) (finding disclaimers too small and too far from plaintiff’s trademarks to dispel consumer confusion); Rolex Watch U.S.A., Inc. v. Watch Empire LLC, 2015 U.S. Dist. LEXIS 131668, *19 (C.D. Cal. 2015) (disclaimers at the bottom of each page of website insufficient).
Requiring the Defendant to Prove the Effectiveness of the Disclaimer
Many courts require the alleged infringer to provide evidence that the disclaimer is effective in preventing consumer confusion. Macy’s Inc. v. Strategic Marks, LLC, 2016 U.S. Dist. LEXIS 11676, *28 (N.D. Cal. 2016); CFE Racing Prods. v. BMF Wheels, Inc., 793 F.3d 571, 596 (6th Cir. 2015). This is especially so if the court has found significant consumer confusion and/or evidence of actual confusion. Int’l Info. Sys. Sec. Certification Consortium, Inc. v. Sec. Univ., LLC, 2014 U.S. Dist. LEXIS 108853, *24 (D. Conn. 2014) (discussing when the Second Circuit has shifted the burden to the infringer to show efficacy of disclaimer).
A Disclaimer Can Affect the Intent Factor in the Likelihood of Confusion Analysis
A party’s use of a disclaimer is often analyzed under the intent factor. Some courts view a disclaimer as evidence of a lack of intent to confuse. CCA &B, LLC v. F + W Media Inc., 819 F. Supp. 2d 1310, 1328 (N.D. Ga. 2011). On the other hand, other courts view a disclaimer as evidence that the defendant was aware of the plaintiff’s trademark rights. Vox Amplification, Ltd. v. Meussdorffer, 2014 U.S. Dist. LEXIS 21577, *36 (E.D.N.Y. 2014).
A Disclaimer Should Appear Alongside All Uses of the Trademark
A defendant will usually use the allegedly infringing trademark in more than one place (e.g., website, packaging, product, advertisements). If the disclaimer is only used in connection with one or some of the allegedly infringing materials, then the disclaimer is not likely to be effective. Alyn v. Southern Land Co., LLC, 2016 U.S. Dist. LEXIS 179215, *30, n. 3 (M.D. Tenn. 2016) (finding disclaimer ineffective in part because some of the defendant’s marketing materials did not have a disclaimer); Valley Forge Military Acad. Found. v. Valley Forge Old Guard, Inc., 24 F. Supp. 3d 451, 457-58 (E.D. Pa. 2014) (“there is no indication that Defendants use disclaimers in the course of their other allegedly infringing activities”); Heraeus Kulzer LLC v. Omni Dental Supply, 2013 U.S. Dist. LEXIS 91949, *20 (D. Mass. 2013) (“However, the disclaimer is not listed anywhere else on the site … nor does it appear in the print catalog.”).
Disclaimers Inadequate When Mark Adopted as a Domain Name
When a defendant has appropriated the plaintiff’s trademark as a domain name, courts generally hold that likelihood of confusion cannot be cured by a disclaimer on the defendant’s website. Key3Media Events, Inc. v. Convention Connection, Inc., 2002 U.S. Dist. LEXIS 4043, *8-9 (D. Nev. 2002); Planned Parenthood Fed’n of Am., Inc. v. Bucci, 1997 U.S. Dist. LEXIS 3338, *39-40 (S.D.N.Y. 1997).
The Adequacy of Disclaimers Must Be Judged on a Case by Case Basis
Ultimately, in researching disclaimers and likelihood of confusion, it quickly becomes apparent that different courts reach different conclusions on the adequacy of disclaimers to obviate a likelihood of confusion—even on seemingly analogous facts. (How unusual in the field of trademark law!) So in the end, as the Second Circuit has observed, when it comes to the adequacy of disclaimers to preclude a likelihood of confusion, “each case must be judged by considering the circumstances of the relevant business and its consumers.” HBO, Inc. v. Showtime/The Movie Channel, Inc., 832 F.2d 1311, 1315 (2d Cir. 1987).
Disclaimers Can Be Requested As Part of Injunctive Relief
If a plaintiff believes a disclaimer is necessary to reduce or prevent consumer confusion, a federal court has the discretion to order the defendant to include an appropriate disclaimer. Nat’l Grange v. Cal. State Grange, 2016 U.S. Dist. LEXIS 130805, *28-29 (E.D. Cal. 2016) (granting preliminary injunction requiring, among other things, that defendant use a disclaimer); Belmora LLC v. Bayer Consumer Care AG, 819 F.3d 697, 713 n.11 (4th Cir. 2016) (noting the option of requiring defendant’s packaging to display a disclaimer); Guthrie Healthcare Sys. v. ContextMedia, Inc., 28 F. Supp. 3d 193, 216 (S.D.N.Y. 2014) (ordering defendant to add disclaimer to already existing videos). However, that does not mean that a defendant can get away with a disclaimer in lieu of an injunction. See, e.g., Starsurgical, Inc. v. Aperta, LLC, 832 F. Supp. 2d 1000, 1006 (E.D. Wis. 2011) (rejecting defendants request to limit injunctive relief to disclaimers because they would likely be ineffective).
The Effectiveness of a Disclaimer May Create a Factual Dispute
The efficacy of a disclaimer in preventing confusion is an issue of fact that can preclude a motion to dismiss or a motion for summary judgment. Dentsply Int’l Inc. v. Dental Brands for Less LLC, 2016 U.S. Dist. LEXIS 87345, *6-7 (S.D.N.Y. 2016) (efficacy of a disclaimer cannot be resolved on a motion to dismiss); Consumers Union of U.S., Inc. v. New Regina Corp., 664 F. Supp. 753, 772 (S.D.N.Y. 1987) (adequacy of disclaimer presented an issue of fact). But where courts are convinced that a disclaimer is inadequate, it will not create an issue of fact precluding summary judgment. See, e.g., Hakkasan LV, LLC v. Adamczyk, 2015 U.S. Dist. LEXIS 110307, *21-22 (D. Nev. 2015) (finding disclaimer inadequate and granting summary judgment).
Disclaimers: Effective and Not Effective
There are courts that hold that disclaimers are effective at precluding a likelihood of confusion. There are courts that hold that disclaimers are not effective at precluding a likelihood of confusion. And so, it really boils down to the facts of the particular case. If the trademarks at issue are identical or highly similar or the parties have competing products or services, a disclaimer is less likely to be effective. If there is actual confusion or a significant likelihood of confusion, then a disclaimer is less likely to be effective. The content of the disclaimer, where it is displayed, and how it is used will also affect its efficacy. In the end, the ability of a disclaimer to dispel likelihood of confusion will be determined on a case-by-case basis based on, among other things, many of the points outlined above in this blog post.