Tag Archives: Likelihood of confusion

Best of 2006: Side by side comparison doesn’t decide likelihood of confusion

Originally posted 2015-01-19 14:43:43. Republished by Blog Post Promoter

Originally posted on July 11, 2006.

Dooney pattern - Thumb

Dooney’s pattern

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:

Read More…

Good News: I Saved a Lot of Money on Litigation

Originally posted 2010-10-12 18:56:06. Republished by Blog Post Promoter

Looking for the Geico v. Google decision?  Here it is.

More to come….

UPDATE: I didn’t exactly mean more litigation — but I guess we shouldn’t be surprised.

UPDATE: I think of Professor Eric Goldman as the person in academia whose professional interests track mine most closely, among the statistically insignificant number of such possible persons I’ve heard of. Anyway, he’s right on here, too — I don’t know what to make of this opinion. Here’s his take, which he shared both on his blog and, in brief form, on the INTA list (link is mine, however):

The opinion does very little to clarify or add to the court’s oral ruling from December. So we really don’t learn much from this opinion, and as a result, I can’t see why this opinion will affect the parties’ settlement negotiations. …

[T]he court does some arm-waving. It appears to endorse GEICO’s position (from Brookfield and other cases) that an “initial interest confusion” case moots the need to use the standard likelihood of confusion multi-factor test[, and the court] summarizes by saying: “To prove likelihood or absence of confusion, initial or otherwise, parties commonly introduce the results of customer or potential customer surveys.”

It’s true that surveys are a standard method of proving likelihood of consumer confusion, and I’m glad the court required some empirical proof rather than mere intuition-driven arguments that pervade most initial interest confusion cases. However, what legal standard is the court using? If it is bypassing the multi-factor likelihood of confusion test, what test is it using? The court doesn’t say.

One other odd thing about this statement. What’s this about proving the absence of confusion? The burden is on the plaintiff, not the defense. Why would anyone need to prove the absence of confusion?

. . .

The court … continues, “Despite the many flaws in its design, the survey’s results were sufficient to establish a likelihood of confusion regarding those Sponsored Links in which the trademark GEICO appears either in the heading or text of the ad.”

This is a non-sequitur. There’s nothing in the court’s opinion or the discussion of the survey that supports this finding. Unfortunately, the court does nothing to explain its thinking about this conclusion or how the survey supports it. The only thing that the court notes is “the extremely high percentages of respondents who experienced some degree of confusion when viewing [ads displaying GEICO in the text].” Further, Google did not introduce any rebutting evidence on that point.

As a result, the court rules for GEICO that “Google may be liable for trademark infringement for the time period before it began blocking such usage or for such ads that have slipped or continue to slip through Google’s system for blocking the appearance of GEICO’s mark in Sponsored Links.”

Not all that encouraging. That’s the mess judges are making of this area of law — and it’s not as if this one didn’t take her sweet, sweet time getting to this point…

UPDATE:  This post, of course, is literally old news now (2010).  The case did settle, but the issues of liability for keyword advertising — both secondary liability and the old-fashioned  right-through-the-front-door kind — are still in play.

Upper crust: the POCKET SANDWICHES (and maybe croissants) saga (Part 2 of 2)

Originally posted 2011-07-18 13:32:48. Republished by Blog Post Promoter


Last week I told the story — as told through this TTAB opinion — of Carl Vennitti’s seven-year tug of war with Nestlé, maker of Hot Pockets food-type product and owner of the HOT POCKETS trademark.  The battle was over Carl’s attempt to use and register the trademark SANDWICH POCKETS.  I promised that part 2 would consist of Carl telling his own story, because I believe, as a blogger, in the Freedom Principle.

Trademark lawyerWhat is the Freedom Principle?

I, as a blogger, have an obligation to use material submitted to me for free if there’s any rationale way it fits with the editorial and I can thereby get a post out of it.

There is no greater freedom than this.

There’s an extra surprise, because this guest submission comes with its own introduction by another trademark blogger, Benjamin Ashurov, who writes a blog called Trademark Bully.  I have added some explanatory links to his introduction to the SANDWICH POCKETS saga, regarding which, you may have noticed if you read this and the prior post carefully, I have actually offered no opinion.  I also take no responsibility for any factual claim in this post or this introduction and in fact welcome any opportunity to correct or clarify the record if appropriate.  I defer, instead, to the Freedom Principle along with a good-faith belief that the narratives published here are materially correct.  I have copy-edited the introduction and Carl’s magnum opus, but very lightly; readers familiar with this blog will see that both guest contributors here are speaking in their own voices.

Cue music, please — first, Benjamin:

After seven years of agonizing litigation, this forum shall allow us to present the over-reaching conducted by one of the world’s largest food companies, foreign owned, and the havoc that they can wreak on a family owned American business, what the results are, and how it affects individual family members who toil at manual labor.

His name is Carl.  He owns and operates a food manufacturing company in Warren, Ohio. He makes a great “pocket sandwich,” the term mandated by the USDA Food Safety and Inspection Service, that has found its way into schools throughout the midwest.

Not everyone thinks that he makes an outstanding product. According to a claim by Nestlé Prepared Foods, Hand Held Products’ division in Colorado, he made an inferior product! At the onset of the attack he was quite surprised at that published statement, because in fact he used to use a lot of Nestlé  products in his (he doesn’t use any more). It’s a ridiculous scenario, so you will have to use your own best judgment about the quality issue.

The whole purpose of the “quality” claim, of course, was to suggest that Carl’s use of a trademark claimed by Nestlé  was harming its reputation.  Yet just recently one of Nestlé’s Hot Pockets employees was arrested — for war crimes in Bosnia. Inferior products? Higher standards?

Most importantly for purposes of this forum, Nestlé also claims to have exclusive right to the word POCKET in a trademark. Left un-addressed, the consuming public may have to quit calling those extra pieces of fabric on clothes “pockets,” or Nestlé may accuse them of infringement, too!

Regardless of these claims, Carl, his family and his company are still supposed to call their food products “pocket sandwiches” by the USDA FSIS definition, and by the former definition in the USPTO’s “Trademark ID Manual.” Today he can.

Here, now, Carl’s story in his own words.  You may want to stick something in the microwave — it’s a long one!

I owe this essay to everyone who believed in creating a dream, and helped build his or her own company into the company we almost were. The following is truthful and factual, which makes it hard to dispute unless, alas, you possess, and are willing to spend, untold amounts of good money to destroy dreams and hard labor, credit, business, integrity and family, such as Nestlé did to me and my family. Read More…

Best of 2010: Dough, a dear

First posted August 11, 2010.

Pillsbury Doughboy

“TM” this, “TM” that….

The Stay-Puft Marshmallow Man wreaked some havoc in his time, but who would have thought that his inspiration — the Pillsbury Doughboy — would act the part of a veritable Gozer the Destroyer himself, at the expense of a funky new-age bakery?

A few weeks ago, the founder of a Salt Lake City-based bakery, My Dough Girl, got a letter from General Mills, the conglomerate that owns Pillsbury. To the 45-year-old entrepreneur’s surprise, the food giant had written to inform her she needed to change the name of her business — claiming it was too similar to Pillsbury’s famous doughboy mascot — or she risked facing legal action. Cromar decided, essentially, that was just the way the cookie crumbles. “I started baking cookies as a way to bring happiness to myself and others, so I really didn’t need this to become some canker on my existence,” Cromar said. “Plus, I just don’t have the resources to fight them.” The case marks the second time in recent weeks that a major corporation has taken issue with a small business over possible trademark infringement.

“The second time in recent weeks,” eh?  That must be awful.


Over here

Sit down, have a croissant.  Let’s talk about this. Dough boy, dough boy, dough boy… where have I heard that? Right — over here (right) — those guys. But while there are batches and batches of DOUGHBOY trademark registrations — some dead, but plenty alive — it does seem that Pilsbury is understandably sensitive about the use of the term in association with baked goods, made famous by its lovable mascot, POPPIN’ FRESH® !

Well actually, a bunch of POPPIN’ FRESH registrations seem to have gone stale, but evidently he’s still a doll (Reg. No. 72307131), and ain’t he? Anyway, back to his, uh, generic name — the DOUGHBOY thing.

Well before we even talk about whether a bakery called DOUGH GIRL is likely to be confused with a commercial baked goods company’s DOUGHBOY , did you notice the graphic on top up there?  How Pillsbury uses a “TM” instead of a ® symbol all over its site?

That is interesting, isn’t it?  Pillsbury does, after all, have a couple of registrations — though not exactly the ones you’d think:

  • Reg. No. 2832951 is for “Baking mix for cake,” in International Class 030 — Staple foods, baked goods, just what you’d think
  • Reg. No. 2764538 is for “Refrigerated dough.”  Same deal.
  • Reg. No. 2091501 is for “Clothing, namely, T-shirts [and boxer shorts].”  Class 25.  Well, sure.

Ok, still, that seems close enough, doesn’t it?  If I were Pillsbury I wouldn’t want anyone selling baked good using DOUGHBOY either, and I’ve got some good and famous registrations to help me stop them.  So why does the Pillsbury site utilize the TM — a common-law assertion of trademark rights, rather than an indication of federal trademark registration — instead of the “circle R”? Read More…

Ruff times for Vuitton

Chewy Vuitton

IP Law Chat reports that LVMH has lost its appeal (decision here) of the “Chewy Vuitton” decision. Here’s an interesting sidelight, and one that may have reverberations beyond this case:

[T]he strength and distinctiveness of the LOUIS VUITTON mark worked against Louis Vuitton in the context of its dilution by blurring claim, making it more likely that a parody (at least an obvious one) will not impair the distinctiveness of the famous mark.

Clients like this — Europeans — must be foaming at the mouth about this one, because European “industrial property” law works entirely differently. But the Fourth Circuit didn’t even throw LVMH a bone.

UPDATE:  I’m reminded that I predicted a reversal.  Me, wrong.

Major League Baseball – SDNY Balks?

SoxA potentially troubling (from the teams’ point of view) thought from the Southern District of New York in a case brought by Major League Baseball against a company selling beanbags with team names, colors and logos on them, reported by the NY Law Journal (subscription required):

The Court finds that a genuine issue of fact exists as to whether MLB Clubs’ trade dress has achieved a secondary meaning in the marketplace. As such, summary judgment on MLBP’s Lanham Act claim is inappropriate.

Wow. In other words, are the logos and team colors of the Yankees, Mets, Red Sox and other billion-dollar busineses protectable as trademarks? Think of the possibilities.

Full decision here.

SCOTUS: Likelihood of Confusion Bows to Fair Use

(HEADLINE UPDATED) Tilt of the chapeau to law student Joe Gratz’s blog for reporting this decision from the U.S. Supreme Court that came down a month ago today. Here’s Joe’s summary and an excerpt from KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.:

The Supreme Court held, unsurprisingly and unanimously, that the affirmative defense of trademark fair use does not place a burden on the defendant to prove that his use was not only descriptive, but also unlikely to cause consumer confusion.

Now I’m not sure I agree with Joe’s comment on his blog that Justice Souter said it all so well; I prefer this pithier summary from the official syllabus: “Nor would it make sense to provide an affirmative defense of no confusion plus good faith, when merely rebutting the plaintiff’s case on confusion would entitle the defendant to judgment, good faith or not.”

By the way, want to guess which Circuit Court the Supreme overturned?

“Criticizing A Trademark Is Not Trademark Infringement”

It’s free speech. This is a big step forward:

In a recent example of just how bizarre [trademark overreaching] has become, there was apparently a dispute over the trademark of the word “Freecycle” that’s been used by groups who promote reusing stuff that would otherwise be thrown out. There was an attempt to [register a] trademark [utilizing] the term, but not everyone was happy about it. One guy put up a website protesting the idea to [register] the term, and he got sued for trademark violations in using the mark in his criticism. Clearly, that’s way beyond the consumer protection purposes of trademark — but a district court actually agreed with the trademark holders, saying that the guy violated trademark law in “disparaging” the trademark. Luckily, the [9]th Circuit appeals court has now overturned the ruling, noting that there is little to no chance of confusion here over the mark. More importantly, the court pointed out that there is no such law against “disparaging” a trademark. That’s a good thing, too, or pretty much all criticism would be outlawed.

Thank you, Ninth Circuit. What’s astonishing, depressing and pathetic is that the mark owners won at the trial level. That’s the level at which small- and medium-sized business and individuals get slaughtered every day.

More here on this story.

A theory of likelihood of confusion

The Legal Theory Blog excerpts from a recent article on the the back story of trademark litigation, by one Michael Grynberg:

The plaintiff effectively represents two parties. She defends her trademark and simultaneously protects consumers who may be confused by the defendant’s behavior. The defendant, by contrast, stands alone.The resulting “two-against-one” storyline gives short shrift to the interests of non-confused consumers who may benefit from the defendant’s purportedly infringing behavior. Ignoring these consumers is especially problematic given the ease with which courts apply pejorative labels, like “misappropriation” and “free riding,” to the conduct of trademark defendants. As a result, courts are too receptive to non-traditional trademark claims, like initial interest and post-sale confusion, for which the case for consumer harm is questionable.

More rational results are available by appreciating trademark litigation’s parallel status as a conflict between consumers. This view treats junior and senior trademark users as proxies for different consumer classes and recognizes that likely confusion among one group of consumers may affirmatively harm others.

I like anyone who tries to push back harm-to-the-plaintiff-free trademark lawsuits based on “non-traditional trademark claims,” and I have not read the whole article (I don’t think it’s available on line), but I don’t quite think this works. As a practical matter I do not believe that this “two against one” burden is a meaningful one for defendants; on the contrary, it is a burden the plaintiff has to carry: He has to convince the courts that not only he, but consumers, are being harmed by the alleged infringement.

Well, that’s how it’s supposed to work. The problems is the opposite one from what it seems Grynberg is saying: Judges ignore the consumer-harm burden placed on the plaintiff, and treat trademarks as rights in gross. Or at least, some do; and the corporate trademark bar most certainly wants them to.

Thus the problem is the mirror image of the one posited.  The solution: Don’t add a factor to the defendant side; merely recognize it on the plaintiff side. It’s been there all along, feeling lonely, judges.

But it is the Dark Side? Or just plain old The Force?

Evan Brown:  “Behold the power of in rem actions“:

In rem actions over domain names are powerful tools. A trademark owner can undertake these actions when it identifies an infringing domain name but cannot locate the owner of that domain name.  In a sense, the domain name itself is the defendant. . . .

An “impostor” registered mediavestw.com, and “tricked” at least one of plaintiff’s business partners into signing up for advertising services. Plaintiff owns a trademark for MEDIAVEST and operates a website at mediavestww.com.  Plaintiff filed an in rem action and sought a temporary restraining order (TRO). . . .

The court found that the TRO would serve the public interest because such interest favors elimination of consumer confusion. (Consider whether there really was any consumer harm that took place here if the alleged fraud was on a business-to-business level. Compare the findings in this case with the finding of no consumer nexus in the recent Reit v. Yelp case.)

The court found that plaintiff had made such a strong showing of the likelihood of success that it did not require plaintiff to post a bond. It ordered the domain name transferred into the court’s control immediately. Behold the power of in rem actions.

Oh, when the defendant is this naughty, Evan, a question such as “was it really consumer confusion”? — perhaps we could ask, instead, “Was there really LIKELIHOOD OF CONFUSION given the sophistication of consumers?”–is, as we say in yeshiva, “not really a question.”

You’ve got a copycat domain name, a competing business and, for heaven’s sake, the Golden Ring itself — actual confusion?  Don’t give me questions!  And as Evan says, it’s for cases such as this one where the wrongfulness of the act is, not surprisingly, matched by the ethereality of the defendant that Congress gave us the in rem action.  Powerful stuff!