Consumer Confusion Can Be Confusing -- From initial confusion to post-purchase confusion - what's the right course? Consumer Confusion can be, well, confusing. There are many different types of confusion that can support an allegation of trademark infringement. In 1962, 15 U.S.C. Â§ 1052 was amended to delete the word â€śpurchasersâ€ť from the phrase â€ślikely to cause confusion, or to cause mistake, or to deceive purchasers.â€ť In addition, 15 U.S.C. Â§ 1114 was amended to delete the phrase â€śas to the source of origin.â€ť These changes broadened actionable confusion to the use of any trademarks that were likely to cause confusion, mistake, or deception of any kind, not just confusion of purchasers or confusion as to source of origin. Since then, federal courts have recognized various types of actionable confusion.
The most classic type of confusion is Source confusion in which the infringing mark confuses the consumer into believing that product or service comes from the wrong source. Source confusion is manifested if consumers make an unconscious judgment that the infringing product is associated with the source of the senior userâ€™s product even though the formal name of the manufacturer is not known to them.
In Sponsorship Confusion, someone is confused about whether one source has sponsored, approved, or certified the goods or services of another or whether there is some other affiliation, connection, or association between the two sources. One such relationship where this is true exists when the sponsor or maker of one business or product might naturally be assumed to be the maker or sponsor of another business product. . . . The deceived customer buys the infringerâ€™s product in the belief that it originates with the trademark owner or that it is in some way affiliated with the owner. When products or services are noncompeting, the confusion at issue is one of sponsorship, affiliation, or connection.
The danger of affiliation or sponsorship confusion increases when the junior userâ€™s services are in a market that is one into which the senior user would naturally expand. The actual intent of the senior user to expand is not particularly probative of whether the junior userâ€™s market is one into which the senior user would naturally expand. If consumers believe, even though falsely, that the natural tendency of producers of the type of goods marketed by the prior user is to expand into the market for the type of goods marketed by the subsequent user, confusion may be likely.
Subliminal and Associational Confusion
Subliminal Confusion is a basis for trademark infringement and occurs when a userâ€™s mark confuses or deceives the consumer on a subliminal or subconscious level, causing the consumer to identify the properties and reputation of a product with another, although the consumer may be able to identify the particular manufacturer of each. The Second Circuit has explained it this way:
The district court gave significant weight that consumers would subliminally associate PLAYMEN, PLAYBOY and ADELINA. Subliminal Association was recognized by Judge Gurfein in Londontown Manufacturing Co. v. Cable Raincoat Co., 371 F. Supp. 1114 (S.D.N.Y. 1974) where he enjoined the use of the mark â€śSmogâ€ť for raincoats because it infringed on the â€śLondon Fogâ€ť mark. Judge Gurfein explained: If consumers come to think of a wire fence as a reminder of a cyclone, then a competitor may not remind them of his wire fence as a tornado. The reason is that advertising and trademarks rely on impressions. The consumer does not memorize the mark. He has a feeling about it from past exposure. That feeling may be vague, subliminal it is said, but it comes to consciousness when the article is seen with the trademark affixed. Judge Gurfein went on to say that the â€śultimate test is . . . whether the public is likely to be confused by the similarity of the marks as to the source of the goods.â€ť
Forward confusion occurs when consumers believe that the goods or services of a junior user come from, or are sponsored by, the senior mark holder.
Reverse confusion occurs when a prior userâ€™s goods or services are mistaken for the junior userâ€™s goods or services. In other words, the consuming public is made to believe that the prior, senior user is actually the infringer. This usually occurs because the junior user is larger and has saturated the market with publicity.
Initial Interest Confusion
Initial interest confusion occurs when temporary confusion creates consumer interest in a good or service but any confusion is dispelled before an actual purchase is made. However, initial interest confusion impermissibly capitalizes on the goodwill associated with a mark. As such, initial interest confusion can support a claim for trademark infringement.
A widely recognized for of confusion under trademark law is Point-of-Sale Confusion. This confusion occurs at the time of purchase when a customer makes a purchase from one company believing it to be the good or service of another.
Post-Sale Confusion (or post-purchase confusion) can form the basis for a trademark infringement claim. Post-sale confusion occurs when someone other than the purchaser sees the infringing good or service and is confused. The law in the Ninth Circuit is clear that â€śpost-purchase confusion,â€ť i.e., confusion on the part of someone other than the purchaser who, for example, simply sees the item after it has been purchased, can establish the required likelihood of confusion under the Lanham Act. An action for trademark infringement can in fact be based upon the confusion of non-purchasers, such as those who simply observe the purchaser wearing the accused article of clothing.â€śPost-saleâ€ť confusion, the court noted, may be no less injurious to the trademark ownerâ€™s reputation than confusion on the part of the purchaser at the time of sale.
Ms. Rhonda Harper, MBA
Retained by more than 130 law firms, Ms. Rhonda Harper is courtroom proven in virtually every circuit along with JAMS and TTAB. Ms. Harper's 35 year career includes serving as a Fortune 100 chief marketing officer and an adjunct marketing professor. In addition to providing litigation consulting and research in the areas of business, licensing, marketing, advertising, and strategy, Ms. Harper is routinely retained to formulate expert surveys, conduct rebuttal critiques, or construct rebuttal surveys to show the potential difference in results with properly designed and executed surveys. She has extensive experience and a deep understanding of survey design, sampling, question construction, data analysis, and the methodological pitfalls that can introduce bias or systematic error.