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. § 1052 was amended to delete the word “purchasers” from the phrase “likely to cause confusion, or to cause mistake, or to deceive purchasers.” In addition, 15 U.S.C. § 1114 was amended to delete the phrase “as to the source of origin.” 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.
Source 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 user’s product even though the formal name of the manufacturer is not known to them.
Sponsorship Confusion
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 infringer’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 user’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 user’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 user’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 “Smog” for raincoats because it infringed on the “London Fog” 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 “ultimate test is . . . whether the public is likely to be confused by the similarity of the marks as to the source of the goods.”
Forward Confusion
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
Reverse confusion occurs when a prior user’s goods or services are mistaken for the junior user’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.
Point-of-Sale Confusion
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
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 “post-purchase confusion,” 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.“Post-sale” confusion, the court noted, may be no less injurious to the trademark owner’s reputation than confusion on the part of the purchaser at the time of sale.
Ms. Rhonda Harper, MBA
In 2022, Ms. Rhonda Harper provided expert courtroom testimony that helped clients win more than $65 million. No wonder she has been retained by hundreds of law firms since 2005. Ms. Harper has testified in virtually every Federal Circuit Court, along with State Courts, the United States Patent and Trademark Office, the Trademark Trial and Appeal Board, and in arbitrations through both AAA and JAMS. She is a former Fortune 100 chief marketing officer and adjunct marketing professor. She has provided testimony for cases regarding intellectual property infringement, misleading advertising, licensing, breach of contract and performance, unfair competition, trade practices, consumer privacy, commercial reasonableness, and personal injury. Ms. Harper has conducted or rebutted more than 200 Lanham Act trademark, trade dress, and advertising surveys.
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