PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION [A]ny relevant consumer confusion will likely occur prior to sale, if at all .... The inherently concealed nature of worn underwear diminishes the concern for post-sale confusion…. Munsingwear Inc. v. Jockey Int’l, Inc ., 31 U.S.P.Q.2d 1146, 1150 (D. Minn.), aff’d , 39 F.3d 1184 (8th Cir. 1994). 29 29
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION The two “directions” of likely confusion: • forward confusion; and • reverse confusion. 30 30
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co ., 561 F.2d 1365 (10th Cir. 1977) 31 31
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co ., 561 F.2d 1365 (10th Cir. 1977) 32 32
PROVING Bases of the Likelihood-of-Confusion Test LIKELY CONFUSION Masters Software, Inc. v. Discovery Commc’ns, Inc., 725 F. Supp. 2d 1294 (W.D. Wash. 2010) 33 33
Ted Davis Kilpatrick Townsend & Stockton LLP 404.815.6534 Tdavis@kilpatricktownsend.com 34
TEST FOR LIKELIHOOD OF CONFUSION Diane Mason LeClairRyan San Francisco, CA
1938 Restatement of Torts § 731 Nine factors considered in likelihood of confusion analysis for non-competitive goods 1. The likelihood that the actor's goods, services or business will be mistaken for those of the other; 2. The likelihood that the other may expand his business so as to compete with the actor; 3. The extent to which the goods or services of the actor and those of the other have common purchasers or users; 4. The extent to which the goods or services of the actor and those of the other are marketed through the same channels; 5. The relation between the functions of the goods or services of the actor and those of the other; 6. The degree of distinctiveness of the trademark or tradename; 7. The degree of attention usually given to trade symbols in the purchase of goods or services of the actor and those of the other; 8. The length of time during which the actor has used the designation; 9. The intent of the actor in adopting and using the designation 36
Federal Circuit In re E. I. du Pont de Nemours & Co ., 476 F.2d 1357(C.C.P.A. 1973) (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use. (3) The similarity or dissimilarity of established, likely-to-continue trade channels. (4) The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing. (5) The fame of the prior mark (sales, advertising, length of use). (6) The number and nature of similar marks in use on similar goods. (7) The nature and extent of any actual confusion. 37
Dupont Factors continued (8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion. (9) The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark). (10) The market interface between applicant and the owner of a prior mark: (a) a mere "consent" to register or use. (b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party. (c) assignment of mark, application, registration and good will of the related business. (d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion. (11) The extent to which applicant has a right to exclude others from use of its mark on its goods. (12) The extent of potential confusion, i.e., whether de minimis or substantial. (13) Any other established fact probative of the effect of use. 38
USPTO Applies Federal Circuit du Pont test in the examination of applications and in contested cases before the TTAB. TMEP § 1207. • Decision based on the goods or services listed in the registration or application, regardless of the manner of actual use in the marketplace. TMEP 1207.01(a)(iii). – Differences in channels of trade, trade dress and other distinguishing factors cannot be relied on unless in application or registration. Miles Labs., Inc. v. Naturally Vitamin Supplements, Inc., 1 U.S.P.Q.2d 1445, 1452 (T.T.A.B. 1986). 39
2nd Circuit Polaroid Corporation v. Polarad Electronics Corporation , 287 F.2d 492 (2d Cir. 1961) (1) the strength of [plaintiff's] mark, (2) the degree of similarity between the two marks, (3) the proximity of the products, (4) the likelihood that the prior owner will bridge the gap, (5) actual confusion, (6) the reciprocal of defendant's good faith in adopting its own mark, (7) the quality of defendant's product, (8) and the sophistication of the buyers 40
3rd Circuit - Lapp Factors Interpace Corp. v. Lapp, Inc ., 721 F.2d 460 (3d Cir. 1983) (1) the degree of similarity between the owner's mark and the alleged infringing mark; (2) the strength of the owner's mark; (3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase; (4) the length of time the defendant has used the mark without evidence of actual confusion arising; (5) the intent of the defendant in adopting the mark; (6) the evidence of actual confusion; (7) whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media; (8) the extent to which the targets of the parties’ sales efforts are the same; (9) the relationship of the goods in the minds of consumers because of the similarity of function; (10) other factors suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant's market, or that he is likely to expand into that market. 41
4th Circuit Pizzeria Uno Corp. v. Temple , 747 F.2d 1522 (4th Cir. 1984) (1) the strength or distinctiveness of the mark; (2) the similarity of the two marks; (3) the similarity of the goods/services the marks identify; (4) the similarity of the facilities the two parties use in their businesses; (5) the similarity of the advertising used by the two parties; (6) the defendant's intent; (7) actual confusion; (8) the proximity of the products as they are actually sold; (9) the probability that the senior mark owner will "bridge the gap" by entering the defendant's market; (10) the quality of the defendant's product in relationship to the quality of the senior mark owner's product; and (11) the sophistication of the buyers 42
5th Circuit Roto Rooter Corp. v. O’Neal , 513 F.2d 44, 45 (5th Cir. 1975), supplemented by Sun-Fun Prods., Inc. v. Suntan Research & Dev., Inc ., 656 F.2d 186, 189 (5th Cir. 1981). See, Westchester Media Co. L.P. v. PRL USA Holdings, Inc ., 214 F.3d 658, 664 (5th Cir. 2000). (1) the type of mark allegedly infringed; (2) the similarity between the two marks; (3) the similarity of the products or services; (4) the identity of the retail outlets and purchasers; (5) the identity of the advertising media used; (6) the defendant’s intent, (7) any evidence of actual confusion; and (8) the degree of care exercised by potential purchasers. 43
9th Circuit AMF Inc. v. Sleekcraft Boats , 599 F.2d 341 (9th Cir. 1979) (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion of the product lines. 44
Test depends on jurisdiction Common factors • Strength of plaintiff’s mark – Arbitrary, suggestive, descriptive? • Similarity of marks – Sound, appearance and connotation • Similarity of goods or services • Defendant’s intent • Actual confusion • Sophistication of buyers or care exhibited by purchasers Factors not evenly weighted • Fact dependent • Subjective test determined on a case by case basis – Legal precedent of limited value 45
All factors not always applied. Odom's Tennessee Pride Sausage Inc. v. FF Acquisition LLC , 93 USPQ2d 2030 (Fed. Cir. 2010). One factor, in this case the differences in the marks, can be determinative. 46
Defenses - 15 U.S.C. § 1115 Registration not valid • Abandonment, Genericide, Fraud Fair Use Prior Use Use of mark in violation of anti-trust laws Mark is functional Equitable defenses • Laches, Estoppel, Acquiescence 47
Challenge Registration • Abandonment – 15 U.S.C. § 1064 provides that “[a] petition to cancel a registration of a mark… may… be filed… (3) At any time if the registered mark… has been abandoned.” – Use is discontinued with an intent not to resume. 15 U.S.C. § 1127. – Intent can be inferred from the circumstances. • non-use for three consecutive years is prima facie evidence of abandonment . • Improper Licensing – License without adequate quality control or supervision by the trademark owner; – Assignment of rights to a trademark in gross, without the corresponding sale of any assets. 48
Challenge Registration Genericide • Form of abandonment – (1) what is the genus of the goods or services at issue? – (2) is the term sought to be registered understood by the relevant public primarily to refer to that genus of goods or services? In re Dial-A-Mattress Operating Corp ., 240 F.3d 1341, 1344 (Fed. Cir. 2001). 49
Challenge Registration Fraud in obtaining registration • Registration obtained fraudulently by knowingly making a false, material representation of fact with the intent to deceive the United States Patent and Trademark Office. See In re Bose Corp ., 580 F.3d 1240 (Fed. Cir. 2009). – False statement regarding use of mark; – Failure to disclose use by others • But, there is no duty to investigate and report to the PTO all other possible users of the same or similar mark. 50
Classic Fair Use Defendant uses mark to describe its goods or services, or geographic origin, or to name the person involved in running the business, and not as a trademark. 15 USC § 1115(b)(4). Elements of fair use: (1) the use of the mark is not a trademark use; (2) the use is fair and in good faith; and (3) the use is only descriptive. Cairns v. Franklin Mint Co ., 292 F.3d 1139, 1151 (9th Cir. 2002) . Some confusion is compatible with fair use . KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004). • Plaintiff that chooses a descriptive term as a mark must live with fact that others may use the term in its descriptive sense . 51
Nominative Fair Use Defendant uses plaintiff’s trademark to identify the plaintiff's goods or services. In New Kids on the Block v. News America Publishing Inc , 971 F. 2d 302 (9th Cir. 1992), the Ninth Circuit found defendants can use following three factor test of instead of traditional likelihood of confusion test: • The product or service must be one not readily identifiable without use of the trademark; • Only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and • The user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. 52
Nominative Fair Use In the Third Circuit, Nominative Fair Use is an affirmative defense. Century 21 Real Estate Corp. v. Lendingtree, Inc ., 425 F.3d 211(3d Cir. 2005). If plaintiff able to prove a likelihood of confusion under shortened version of 10-part Lapp factors, then defendant has the opportunity to assert nominative fair use as an affirmative defense. Three questions must be answered in the affirmative for the affirmative nominative fair use defense to operate: 1. Is the use of plaintiff's mark necessary to describe both the plaintiff's product and the defendant's product? 2. Is only so much of the plaintiff's mark used as is necessary to describe plaintiff's product? 3. Does the defendant's conduct or language reflect the true and accurate relationship between plaintiff and defendant's products? 53
Parody Not an affirmative defense. Way of arguing no likelihood of confusion. • The ordinary consumer will not be deceived or confused because she will see that the defendant's use is a joke. Plaintiff's intellectual property must be target of the defendant's parody. • Not a parody if defendant appropriates a trademark as a way to satirize something else in society. Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc ., 109 F.3d 1394 (9th Cir. 1997). 54
Thank You D IANE J. M ASON diane.mason@leclairryan.com 415-913-4911 55
Proving a Likelihood of Confusion June 6, 2013 Presented by Robert D. Litowitz
A Lifetime of Confusion 57 57
A Lifetime of Confusion 58 58
A Lifetime of Confusion 59 59
A Lifetime of Confusion 60 60
??? 61 61
Proving a Likelihood of Confusion • “[A] question of law based on underlying facts.” In re Coors Brewing Co., 343 F.3d 1340, 1343 (Fed. Cir. 2003) • Trademark owner has burden of proof 62 62
Proving a Likelihood of Confusion • Two categories of “facts” that can be proven – Objective facts — who, what, when, how much? • Documents • Records • Testimony of fact witnesses – Subjective facts —what’s likely to happen • Surveys • Other expert testimony 63 63
Objective Facts: The Theme and Story • Trademark litigation is not unique • A good theme and story spell success 64 64
Theme: Case Study • Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150 (4th Cir. 2014) – Issue: Does SWAP for watches conflict with SWATCH watch mark? 65 65
Swatch’s Theme • Consumers believe SWA- words in connection with watches means SWATCH • Too close for comfort 66 66
Beehive’s Theme • Marks must be considered as they appear in the marketplace as they appear to the consumer. • No one is confused • POTENZA and TURANZA are secondary to BRIDGESTONE/lack fame 67 67
Stories • Swatch – We spent $ millions, sold $ millions to make SWATCH a well-known name – Marks have similar structure and sound • Beehive – Beehive watches have been sold since 2003 and there are no instances of actual confusion – Marks differ in overall sound and appearance 68 68
The Proofs • Strength of marks – Degree of strength = Degree of protection • Inherent strength: Where do marks fall on the “spectrum?” • Commercial strength: How well do consumers know the mark? 69 69
Proofs: Inherent Strength Fanciful Arbitrary Suggestive Descriptive 70 70
Swatch • Beehive conceded that SWATCH is well-known • Beehive evidence ̶ Advertisements used to teach consumers how to SWAP suggests the mark is not descriptive • Court found “merely showing the mark and the product together would be insufficient to convey its attributes.” Consumers must make a further leap 71 71
Outcome • SWAP is a suggestive mark and therefore carries greater inherent strength • The differences in packaging and overall appearance of both the marks and the goods are unlikely to lead to consumer confusion 72 72
̶ ̶ ̶ Case Study: Fuel Clothing v. Nike (D. S.D. 2014) • Fuel Clothing Co., Inc. v. Nike, Inc., 2014 WL 1155402 (D.S.C. Mar. 20, 2014) • Fuel Clothing makes athletic gear for action sports, including snowboarding, and skateboarding The company has sold clothing for action sports under the mark FUEL since 1992 Fuel protected its mark against infringement in 5 litigation proceeding and almost 20 companies • In 2012, Nike introduced an electronic wristband under the NIKE + FUELBAND mark Nike promoted the band with extensive advertising, including some promotional t-shirts 73 73
Fuel Clothing v. Nike, (D. S.D. 2014) -- Facts • FUEL mark is registered in Class 25 for “clothing, namely hats, shirts, skirts, dresses, swim wear, sweaters, T-shirts, tank tops, socks, belts, and pants ” • NIKE + FUELBAND mark is registered in class 9 for “electronic monitoring devices” and class 14 for “watches and bracelets” 74 74
Fuel Clothing Theme • Nike’s fame swamps our smaller company’s efforts with celebrity endorsements (including skateboarders), and we cannot compete 75 75
Nike’s Theme • When consumers see the Nike they know we made the product • The goods are not sold in the same places • Fuel Clothing does not sell electronic wrist bands 76 76
Proofs: Commercial Strength • Dollars spent on advertising and promotion • Revenues earned • Number of sales • Length of use 77 77
̶ ̶ ̶ Fuel Clothing v. Nike • Fuel Clothing Since 1993 less than $20,000 spent in advertising Fuel operated at a loss during 14 of 19 years • There are over 1000 federally registered trademarks including the word “Fuel,” many in the same class as Fuel Clothing The market was already saturated by the time Nike entered, therefore Nike’s introduction of FUELBAND did not overwhelm Fuel Clothing 78 78
Objective Evidence: Cost of Goods • How much do products at issue cost? – Impulse purchase? – Careful purchase? – Distracted shopper? – Educated consumer? 79 79
Fuel Clothing v. Nike • NIKE + FUELBAND - $169 • Fuel Clothing – leather wristband $16-26 • Nike’s promotional t -shirts – account for less than 1% of all NIKE + FUELBAND sales 80 80
Where Are Goods Sold? • In brick-and-mortar store? • Online? • In same location/trade channel? • In different locations/trade channels? 81 81
̶ ̶ ̶ Fuel Clothing v. Nike • Dissimilar goods • No Overlapping trade channels Goods are never sold side-by-side in same stores Nike uses large retailers or sold exclusively through NIKE and APPLE. Fuel argues that goods are both sold over the internet • Court finds the overlap in trade channels to be insignificant 82 82
Objective Evidence: Advertising • How and where are goods advertised – Same media? – Different media? 83 83
Objective Evidence: Intent • What motivated defendant to choose its mark? – Likelihood of confusion may be presumed where defendant deliberately mimicked the plaintiff’s mark • Example: YKK vs. YPP for zippers – Defendant rejected numerous options as not similar enough to YKK 84 84
Objective Evidence: Intent • But choosing mark that calls to mind another’s mark does not necessarily create presumption: No monopoly on two syllable marks with Scandinavian “flair” – Haagen Dazs v. Frusen Gladje, 493 F.Supp. 73 (S.D.N.Y. 1980) 85 85
Fuel Clothing v. Nike • Fuel contends that Nike wants more of the action sports market • In an effort to gain creditability Nike copied the FUEL mark. • Court finds that Nike acted in good faith by adopting the mark on unrelated goods given the relative weakness of the FUEL mark in the marketplace 86 86
Objective Evidence: Actual Confusion • The best evidence of the likelihood of confusion, but is not required • Actual confusion evidence can be hard to find • Actual confusion evidence is tricky – Courts sometimes discount or reject it – Absence of actual confusion over time may help defendant 87 87
Actual Confusion: Example • The Fresh Market • Arthur’s Fresh Market 88 88
Actual Confusion: Example • The Fresh Market v. Arthur’s Fresh Market – Fresh Market was incontestable mark for grocery chain – Fresh Market expanded to new state/city - Indy – Local grocer opened Arthur’s Fresh Market ; planned another in Letterman’s old store – Fresh Market and Arthur’s both recorded actual confusion – Court minimized this evidence, denied injunction 89 89
Impact of Actual Confusion • Bentley Motors Ltd. Corp. v. McEntegart, 2013 WL 5487212 (M.D. Fla. Sept. 30, 2013) • Defendant manufactured “Bentley kits” to transform Chryslers and Fords into knockoff Bentley Vehicles • “[B] ecause Bentley has presented evidence of concurrent, unauthorized use of Bentley's protected marks as well as some evidence of actual confusion, Bentley has established the likelihood of confusion element of its statutory trademark infringement claim.” 90 90
Proving Likelihood of Confusion: Subjective Facts • Given the objective facts — the marks, the products, the purchasers, the trade channels, the advertising, how likely is it or not that confusion will occur? 91 91
Subjective Facts: Experts • Survey Experts • Other experts – To conduct surveys and – Linguists present them – Marketing experts – To critique surveys – Industry experts – Legal experts 92 92
Surveys Testing Likelihood of Confusion • Survey not necessary, especially for flagrant infringement • But – Courts often expect surveys – Lack of survey can hurt – Courts sometime view competing surveys as a “push” 93 93
Survey Fundamentals • Manual of Complex Litigation, Federal Judicial Center Reference Guide on Survey Research – Choose the right people to interview (“the universe”) – Obtain a fair sample – Use qualified interviewers who follow proper procedures – Make questions clear, relevant, non-leading – Analyze and present the results properly and fairly 94 94
Survey Fundamentals: Who to question? • Potential customers likely to be exposed to the marks at issue – Forward confusion —the accused infringer’s customers – Reverse confusion —the trademark owner’s customers • Relevance is the key: questioning the wrong people produces irrelevant results 95 95
Survey Fundamentals: What Should Participants Be Shown? • Survey should strive to replicate real world – Participants should see the marks at issue as they would when deciding what to buy – Survey should avoid biased or misleading presentations • Example — showing two marks side-by-side when they are not sold that way 96 96
Survey Fundamentals: What Questions Should Be Asked • Eveready format – Who do you think makes this product, if you know? – Do you think the maker of this machine offers any other products or services? • If yes, what other products or services? • What makes you think so? – Best for when plaintiff’s mark is well know 97 97
Survey Fundamentals: What Questions Should Be Asked • Squirt format – [After showing first product] Do you think this product is made by the same company as the product I just showed you? – If yes, what makes you think so? 98 98
Survey Fundamentals: Controls • Surveys of likelihood of confusion usually need a control – A “dummy” stimulus to weed out “confusion” caused by guessing or other factors unrelated to similarity of the marks • e.g. “Sandoz” in survey to measure whether “Zeneca” for ag chemicals conflicted with “Seneca” for seeds 99 99
Survey Fundamentals: What Are Good Results • Rule of thumb — 15% or higher – Courts have accepted 10% or lower, where market is large 100 100
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