The Different Types of Confusion That Can Support Trademark Infringement
Trademark infringement requires a likelihood of confusion. But what kind of confusion is required? Turns out, confusion has come a long way since 1962.
In 1962, 15 U.S.C. § 1052 was amended to delete the word “purchasers” from the phrase “likely to cause confusion, or to cause mistake, or to deceive purchasers.” In addition, 15 U.S.C. § 1114 was amended to delete the phrase “as to the source of origin.” These changes broadened actionable confusion to the use of any trademarks that were likely to cause confusion, mistake, or deception of any kind, not just confusion of purchasers or confusion as to source of origin. Since then, federal courts have recognized various types of actionable confusion.
Source confusion is the classic example of confusion. In this type of confusion, the infringing mark confuses the consumer into believing that product or service comes from the wrong source. E. & J. Gallo Winery v. Gallo Cattle Co., 1989 U.S. Dist. LEXIS 7950, *57-58 (E.D. Cal. 1989) (“Source confusion is manifested if consumers make an unconscious judgment that the infringing product is associated with the source of the senior user’s product even though the formal name of the manufacturer is not known to them.”).
In this type of confusion, someone is confused about whether one source has sponsored, approved, or certified the goods or services of another or whether there is some other affiliation, connection, or association between the two sources. Courts generally refer to this type of confusion as sponsorship confusion:
“One such relationship where this is true exists when the sponsor or maker of one business or product might naturally be assumed to be the maker or sponsor of another business product. . . . The deceived customer buys the infringer’s product in the belief that it originates with the trademark owner or that it is in some way affiliated with the owner.”
World Carpets, Inc. v. Dick Littrell’s New World Carpets, 438 F.2d 482, 488 (5th Cir. 1971), cited in Professional Golfers Ass’n, 514 F.2d at 670. When products or services are noncompeting, the confusion at issue is one of sponsorship, affiliation, or connection. See Kentucky Fried Chicken Corp. v. Diversified Packaging Corp., 549 F.2d 368, 388 (5th Cir. 1977); 3 MCCARTHY, supra, §§ 24:3, :6.
The danger of affiliation or sponsorship confusion increases when the junior user’s services are in a market that is one into which the senior user would naturally expand. See RESTATEMENT, supra, § 21(e) & cmt. j. The actual intent of the senior user to expand is not particularly probative of whether the junior user’s market is one into which the senior user would naturally expand. Id. cmt. j.; 3 MCCARTHY, supra, § 24:19. Consumer perception is the controlling factor. See Dreyfus Fund Inc. v. Royal Bank of Can., 525 F. Supp. 1108, 1119-20 (S.D.N.Y. 1981) (noting that consumer perception controls over the actual intent of the senior user); 3 MCCARTHY, supra, § 24:19. “If consumers believe, even though falsely, that the natural tendency of producers of the type of goods marketed by the prior user is to expand into the market for the type of goods marketed by the subsequent user, confusion may be likely.” RESTATEMENT, supra, § 21 cmt. j.
Elvis Presley Enters. v. Capece, 141 F.3d 188, 202 (5th Cir. 1988).
Subliminal and Associational Confusion
Subliminal confusion is a basis for trademark infringement. Subliminal confusion occurs when a user’s mark confuses or deceives the consumer on a subliminal or subconscious level, causing the consumer to identify the properties and reputation of a product with another, although the consumer may be able to identify the particular manufacturer of each. Montblanc-Simplo GmbH v. Aurora Due S.r.L., 363 F. Supp. 2d 467, 478 (E.D.N.Y. 2005). The Second Circuit has explained it this way:
The district court gave significant weight to Scott’s testimony that consumers would subliminally associate PLAYMEN, PLAYBOY and ADELINA. Subliminal association as a basis for trademark infringement was recognized by Judge Gurfein in Londontown Manufacturing Co. v. Cable Raincoat Co., 371 F. Supp. 1114 (S.D.N.Y. 1974) where he enjoined the use of the mark “Smog” for raincoats because it infringed on the “London Fog” mark. Judge Gurfein explained:
If consumers come to think of a wire fence as a reminder of a cyclone, then a competitor may not remind them of his wire fence as a tornado. Hancock v. American Steel & Wire Co., supra, 203 F.2d 737. The reason is that advertising and trademarks rely on impressions. The consumer does not memorize the mark. He has a feeling about it from past exposure. That feeling may be vague, subliminal it is said, but it comes to consciousness when the article is seen with the trademark affixed. Id. at 1118.
Judge Gurfein went on to say that the “ultimate test is . . . whether the public is likely to be confused by the similarity of the marks as to the source of the goods.” Id.
Playboy Enters. v. Chuckleberry Publ’g, Inc., 687 F.2d 563, 570 (2d Cir. 1982).
Forward confusion occurs when consumers believe that the goods or services of a junior user come from, or are sponsored by, the senior mark holder. Moab Indus., LLC v. FCA US, LLC, 2016 U.S. Dist. LEXIS 139816, *10 (D. Ariz. 2016).
Reverse confusion occurs when a prior user’s goods or services are mistaken for the junior user’s goods or services. In other words, the consuming public is made to believe that the prior, senior user is actually the infringer. This usually occurs because the junior user is larger and has saturated the market with publicity. Young v. 3.1 Phillip Lim, LLC, 2016 U.S. Dist. LEXIS 158931, *7 (C.D. Cal. 2016).
Initial Interest Confusion
Initial interest confusion occurs when temporary confusion creates consumer interest in a good or service but any confusion is dispelled before an actual purchase is made. Multi Time Mach., Inc. v. Amazon.com, Inc., 804 F.3d 930, 946 (9th Cir. 2005). However, initial interest confusion impermissibly capitalizes on the goodwill associated with a mark. Id. As such, initial interest confusion can support a claim for trademark infringement. Id.
A widely recognized for of confusion under trademark law is point-of-sale confusion. This confusion occurs at the time of purchase when a customer makes a purchase from one company believing it to be the good or service of another. Idaho Golf Partners, Inc. v. Timberstone Mgmt., LLC, 2016 U.S. Dist. LEXIS 129197, *16 (D. Idaho 2016).
Post-sale confusion (or post-purchase confusion) can form the basis for a trademark infringement claim. Post-sale confusion occurs when someone other than the purchaser sees the infringing good or service and is confused:
The law in the Ninth Circuit is clear that “post-purchase confusion,” i.e., confusion on the part of someone other than the purchaser who, for example, simply sees the item after it has been purchased, can establish the required likelihood of confusion under the Lanham Act. See Acad. of Motion Picture Arts and Sciences, 944 F.2d at 1456; Levi Strauss & Co. v. Blue Bell, Inc., 632 F.2d 817, 822 (9th Cir. 1980). Similarly, in Payless Shoesource, Inc. v. Reebok Int’l Ltd., 998 F.2d 985 (Fed. Cir. 1993), the Federal Circuit noted that the 1962 amendments to section 32 of the Lanham Act specifically struck language limiting the scope of the Act to confusion by “purchasers.” 998 F.2d at 989. The court held, following decisions including Levi Strauss, that an action for trademark infringement can in fact be based upon the confusion of nonpurchasers, such as those who simply observe the purchaser wearing the accused article of clothing. Id. “Post-sale” confusion, the court noted, may be no less injurious to the trademark owner’s reputation than confusion on the part of the purchaser at the time of sale. See 998 F.2d at 989-90.
Karl Storz Endoscopy-Am., Inc. v. Surgical Techs., Inc., 285 F.3d 848, 854 (9th Cir. 2002).
Consider the Types of Confusion
When evaluating infringement or filing a lawsuit for trademark infringement, consider all the different types of confusion that could potentially support an infringement claim. I’d also recommend specifically pleading the different types of confusion because some courts will not allow a plaintiff to pursue an infringement claim based on a type of confusion that was not specifically pled (this is more typically the case for the less common types of confusion as opposed to source confusion).