Judge: Test is likelihood of confusion, not mere use, not initial interest

From the New York Law Journal (subscription required):

A federal judge has refused to grant a preliminary injunction against a restaurant workers’ group that used a business’ logo for informational leafletting outside of two restaurants.

Southern District Judge Gerard Lynch said there was no “lingering confusion that could result in the irreparable loss of customers,” and in fact, the use of the plaintiffs’ marks was unlikely to cause “any” loss of sales in SMJ Group Inc. v. 417 Lafayette Restaurant, 06 1774.

The leaflets showed the trademarked [sic] logo of the restaurants and read “Do You Really Want to Eat Here?” It informed customers and passersby that workers from the restaurant had sued in federal court over unpaid overtime, misappropriated tips, discrimination, harsh working conditions and sexual harassment.

No confusion. Merely using a logo as part of a statement about the subject of the logo (or, presumably, the logo itself) is not trademark infringement. No loss of sales. And if there were some confusion likely, what is the likelihood of damages — which some of us forget are an element of a Lanham Act claim?

Well, what about initial interest confusion?

The parties agreed that a person who is handed a leaflet will initially believe it is associated with the restaurant.

“However, the parties also agree that as soon as the individual opens the leaflet and reads the message inside, the individual will immediately realize, based on the critical nature of the message, that the leaflet is not in fact associated with the plaintiffs,” Judge Lynch said.

Both sides focused on the doctrine of “initial interest confusion” — which deals with confusion that is later dispelled.

Judge Lynch disagreed with the defendants, as well as the U.S. Court of Appeals for the Fourth Circuit in Lamparello v. Falwell, 420 F.3d 309 (2005), and rejected the notion that the “case law imposes a commercial or for-profit limit on the application of the doctrine.”

God bless you, Judge Lynch! And he didn’t even sneeze.

UPDATE: Bill Patry has similar theological inclinations.

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Ron Coleman

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