Side by side comparison doesn’t decide likelihood of confusion
This is an important decision: The Second Circuit Court of Appeals has partially reversed the earlier ruling of the U.S. District Court for the Southern District of New York (full decision here) in Louis Vuitton Malletier v. Dooney & Bourke, Inc.
Here’s the “money quote” as a once-great blogger taught me to say (citations and internal quotes omitted; link added) :
We turn next to the question of likelihood of confusion. . . . The similarity of the marks is a key factor in determining likelihood of confusion. To apply this factor, courts must analyze the mark’s overall impression on a consumer, considering the context in which the marks are displayed and the totality of factors that could cause confusion among prospective purchasers.’ The district court here noted that there were “obvious similarities” between the Louis Vuitton and Dooney & Bourke handbags. However, it determined that despite the similarities, the two marks were not confusingly similar. It appears the trial court made the same mistake that we criticized in [the] Burlington Coat Factory [decision]: inappropriately focusing on the similarity of the marks in a side-by-side comparison instead of when viewed sequentially in the context of the marketplace. The district court reasoned:
[I]t could not be more obvious that Louis Vuitton uses the initials “LV,” while Dooney & Bourke uses its trademarked “DB” logo. Thus, a consumer seeing these trademarks printed on these bags, either up close or at a distance, is not likely to be confused. . . . [T]he Dooney & Bourke bags only use their “DB” initials; there are no geometric shapes interspersed with the monogram. . . . [T]he colors used on the Dooney & Bourke bag are noticeably toned down, and consequently fail to evoke the characteristic “friction” sparked by Murakami’s bright, clashing colors, the Louis Vuitton marks create a very different overall impression (i.e., large interspersed shapes and initials in crisp, bold colors) than the Dooney & Bourke bags (i.e., tightly interlocked initials in dulled colors).
We disapproved almost identical language in Burlington Coat Factory. Utilizing a side-by-side comparison can be a useful heuristic means of investigating similarities and differences in respective designs, so long as a court maintains a focus on the ultimate issue of the likelihood of consumer confusion. Courts should keep in mind that in this context the law requires only confusing similarity, not identity. Further, where, as here, the plaintiff claims initial-interest and post-sale confusion, market conditions must be examined closely to see whether the differences between the marks are likely to be memorable enough to dispel confusion on serial viewing. The district court erred because it based its determination that confusion between the Vuitton and Dooney & Bourke marks was unlikely at least in part on an overemphasized side-by-side comparison. This is suggested by the district court’s comment that no amount of expert opinion, legal analysis, or demonstrative evidence can overcome the clarity that comes from direct observation.
Read that excerpt again, then re-read it; then email it to your favorite federal judge — and your favorite client or prospective client, or non-specialist lawyer dabbling in trademark, who can’t understand why the PTO doesn’t understand the difference between his spelling that uses a “z” and the other guy’s pre-existing registration that uses an “s”. Again:
Courts should keep in mind that in this context the law requires only confusing similarity, not identity. Further, where, as here, the plaintiff claims initial-interest and post-sale confusion, market conditions must be examined closely to see whether the differences between the marks are likely to be memorable enough to dispel confusion on serial viewing.
And yes, this applies even where there’s initial interest confusion! And, yes, that’s a double-edged sword: Even if there’s initial interest confusion, if the differences between the marks are “memorable enough to dispel confusion on serial viewing” there’s no likelihood of confusion — no trademark infringement!
Hat tip to the New York Law Journal (subscription required).