Can there be “infringement” of a trademark without confusion? As she is so apt to do, and to do so well, Pamela Chestek asks that question in this post, entitled Infringement Without Confusion?, which is about something completely different from what I thought it was going to be about, because I know that, in New York at least, the answer can be yes. That’s not the question Pamela is asking. But this is a great opportunity, and given the name of this blog and what I say up in the right-hand-corner there, a good place, to unpack a few things about this thing, and address what I thought she meant before proceeding to what she meant, as well as to what’s going on in the comments to her post. The … confusion on my part is not, in fact, irrelevant. What was I thinking of when I read the question? New York’s famous, or perhaps infamous, state-law tort of unfair competition by “wrongful misappropriation,” of course. To wit: In New York, the “essence of unfair competition . . . is the bad faith misappropriation of the labors and expenditures of another, likely to cause confusion or to deceive purchasers as to the origin of the goods.” Nabisco, Inc. v. PF Brands, Inc., 50 F. Supp. 2d 188, 212 (S.D.N.Y. 1999). To assert an unfair competition claim, a plaintiff must demonstrate (1) a likelihood of confusion, and (2) the defendant’s bad faith. Kraft Gen. Foods, Inc. v. Allied Old English, Inc., 831 F. Supp. 123, 135 (S.D.N.Y. 1993). Unlike a claim for trademark infringement, proof of secondary meaning ,or, indeed, of a protectable mark at all) is not required. Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339, 364 (S.D.N.Y. 1998). Ok, very nice. But is “infringement without confusion” the same thing as “confusion without secondary meaning”? Well, how would it be different? Once you’re dealing with logical dead-ends, after all, they start to look quite similar, and end up in more or less the same place.
After all, the premise of confusion is a baseline of association — in trademark law, we call that secondary meaning, or… a protectable mark. Same place. Indeed, pointier heads than that of LIKELIHOOD OF CONFUSION® have long pondered what the heck it means to have a likelihood of confusion without secondary meaning, or without a protectable mark. As one academic treatment of this odd creature put it,
Some legal theories, like the proverbial vampire, refuse to die. The common law tort of misappropriation is one such legal theory, and the recent Restatement (Third) of Unfair Competition (Restatement) may finally lead to the demise of this outdated cause of action.
Regrettably, the “recent” referred to in that quote was 1993. Read More…