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When ordering, please use Priority Code NWS9-X. Likelihood of Confusion in Trademark Law

SECOND EDITION Richard L. Kirkpatrick

Incorporating Release #11 November 2018 #240110

Practising Law Institute New York City

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Legal Editor: Keith Voelker Copyright © 1995, 1996, 1997, 1998, 1999, 2000, 2001, 2002, 2003, 2004, 2005, 2006, 2007, 2008, 2009, 2010, 2011, 2012, 2013, 2014, 2015, 2016, 2017, 2018 by Practising Law Institute. First edition 1995 Second edition 2013 All rights reserved. Printed in the United States of America. No part of this publication may be reproduced, stored in a retrieval system, or transmitted in any form by any means, electronic, mechanical, photocopying, recording, or otherwise, without prior written permission of Practising Law Institute.

LCCN: 2013940463 ISBN: 978-1-4024-2019-1 sociis laborum

About the Author

RICHARD L. KIRKPATRICK, who has specialized in trademark and unfair competition law since 1980, is Chair of the Intellectual Property Department (San Francisco) of Pillsbury Winthrop Shaw Pittman LLP. He is a member of the District of Columbia and California bars.

(Kirkpatrick, Rel. #11, 11/18) ix

Table of Chapters

Chapter 1 Principles of Likelihood of Confusion Chapter 2 The Multiple Factor Test Chapter 3 Strength of the Senior Mark Chapter 4 Similarity of the Marks Chapter 5 Product Relatedness Chapter 6 The Consumers and Their Degree of Care Chapter 7 Actual Confusion Chapter 8 The Junior User’s Intent

(Kirkpatrick, Rel. #11, 11/18) xi

Table of Contents

About the Author ...... ix

Table of Chapters ...... xi

Table of Abbreviations ...... xix

Preface ...... xxi

Chapter 1 Principles of Likelihood of Confusion

§ 1:1 “Likely to Cause Confusion” Is an Element of Pleading and Proof...... 1-2 § 1:1.1 Federal Statutes and Case Law...... 1-5 § 1:1.2 State Statutes and Common Law...... 1-10 § 1:1.3 “” and “Palming Off” Distinguished from Likelihood of Confusion ...... 1-17 § 1:1.4 “Confusing Similarity” Distinguished...... 1-18 § 1:2 Private Interests, Public Policies...... 1-19 § 1:3 Causation and Predicates of Confusion ...... 1-23 § 1:4 Actionable Confusion...... 1-33 § 1:4.1 Source Confusion ...... 1-33 § 1:4.2 Sponsorship Confusion ...... 1-34 § 1:4.3 Reverse Confusion...... 1-36 § 1:4.4 Subliminal and Associational Confusion ...... 1-38 § 1:4.5 Confusion of Marks and of Products ...... 1-39 § 1:5 Other States of Mind Distinguished ...... 1-40 § 1:5.1 Dilution...... 1-40 § 1:5.2 Calling to Mind...... 1-42 § 1:6 Relevant Confused Persons: Potential Purchasers, Purchasers, and Nonpurchasers ...... 1-43 § 1:7 Relevant Time of Confusion ...... 1-48 § 1:8 Proof ...... 1-55 § 1:8.1 Direct and Indirect Evidence ...... 1-55 § 1:8.2 Burden and Quantum; Special Cases ...... 1-56 § 1:8.3 Evidentiary Effect of Registration ...... 1-65 § 1:8.4 Lay and Expert Opinion ...... 1-66 § 1:8.5 PTO Actions...... 1-67

(Kirkpatrick, Rel. #11, 11/18) xiii LIKELIHOOD OF CONFUSION

§ 1:8.6 Consents in the PTO ...... 1-72 § 1:8.7 Foreign Acts...... 1-73 § 1:8.8 Prior Inconsistent Arguments ...... 1-74 § 1:8.9 Benefit of the Doubt...... 1-75 § 1:9 Duty of the Second Comer...... 1-76 § 1:10 Confusion and Fair Use ...... 1-78

Chapter 2 The Multiple Factor Test

§ 2:1 The Problem...... 2-2 § 2:2 The Perspective of the Marketplace...... 2-3 § 2:3 Legal Precedent of Only Limited Value...... 2-6 § 2:4 The “Multiple Factor” Method...... 2-8 § 2:5 Flexibility and Interrelatedness of the Factors...... 2-19 § 2:6 Shifting Relevance and Weight of the Factors ...... 2-23 § 2:7 The Factors As Applied to Cases of Competitive and Noncompetitive Goods...... 2-32 § 2:8 The Factors in Registrability Proceedings...... 2-33 § 2:9 The Factors As Legal or Factual Questions ...... 2-39 § 2:10 Beyond Confusion: The Factors and Equity...... 2-44 § 2:11 Preliminary Injunction ...... 2-47 § 2:11.1 Likelihood of Success...... 2-49 [A] Evidence ...... 2-52 § 2:11.2 Irreparable Injury...... 2-55 § 2:11.3 Balance of Harms ...... 2-57 [A] Harms to Plaintiff ...... 2-58 [B] Harms to Defendant ...... 2-58 § 2:11.4 Public Interest ...... 2-61 § 2:12 Summary Judgment...... 2-63 § 2:12.1 The Factors Applied ...... 2-65 [A] Actual Confusion ...... 2-72 [B] Intent...... 2-76 [C] Similarity of Marks ...... 2-79

Chapter 3 Strength of the Senior Mark

§ 3:1 Strength and the Degree of Protection ...... 3-1 § 3:2 Strong or Famous Marks...... 3-5 § 3:3 Weak Marks...... 3-13 § 3:4 Inherent and Acquired Strength ...... 3-19 § 3:4.1 Inherent Strength ...... 3-20 § 3:4.2 Acquired Strength...... 3-28 § 3:5 Factors for Gauging Acquired Strength ...... 3-31 § 3:5.1 Direct Evidence ...... 3-32 § 3:5.2 Circumstantial Evidence ...... 3-33

xiv Table of Contents

§ 3:6 Third-Party Marks...... 3-42 § 3:6.1 Relevance...... 3-42 § 3:6.2 Weight ...... 3-47 § 3:6.3 Problematic Types...... 3-51 § 3:6.4 Number ...... 3-58 § 3:6.5 Proof ...... 3-60 § 3:7 Effect of Registration and Incontestability...... 3-66

Chapter 4 Similarity of the Marks

§ 4:1 Similarity in Context ...... 4-2 § 4:2 Degree of Similarity...... 4-6 § 4:3 The Three-Part Test: Sound, Meaning, Appearance...... 4-7 § 4:3.1 Commercial Impression ...... 4-7 § 4:3.2 Sound ...... 4-10 § 4:3.3 Meaning ...... 4-13 [A] Word Versus Picture ...... 4-16 [B] Foreign Word Versus English Word ...... 4-17 [C] Foreign Word Versus Foreign Word ...... 4-19 § 4:3.4 Appearance ...... 4-20 [A] Design Versus Design...... 4-22 [B] Letters Versus Letters ...... 4-23 [C] Different Word/Similar Design ...... 4-25 § 4:4 Consider the Marks As Would the Relevant Public ...... 4-26 § 4:5 Consider the Marks Singly...... 4-27 § 4:6 Weigh Similarities More Heavily than Differences...... 4-29 § 4:7 Compare the Marks in Their Entireties...... 4-32 § 4:8 Consider the Marks in Their Settings...... 4-36 § 4:9 Give Dominant Portions of Composite Marks Greater Weight ...... 4-45 § 4:9.1 Family Features ...... 4-49 § 4:9.2 Words/Designs...... 4-51 § 4:9.3 Letters/Designs ...... 4-53 § 4:9.4 Effect of Registration Disclaimers ...... 4-53 § 4:10 Marks Having Portions in Common...... 4-54 § 4:10.1 One Mark Incorporating Another ...... 4-55 § 4:10.2 Common Portion Comparatively Strong, Dominant...... 4-60 § 4:10.3 Common Portion Weak, Recessive...... 4-62 § 4:10.4 Common Portion Generic or Functional...... 4-67 § 4:10.5 Given Name/Surname...... 4-68 § 4:10.6 Marks Suggesting an Association ...... 4-70 § 4:10.7 Marks with Source Modifiers ...... 4-73 § 4:10.8 Marks with Geographic Modifiers...... 4-74 § 4:11 Reversal of Elements ...... 4-75 § 4:12 The Familiar Versus the Unfamiliar ...... 4-76

(Kirkpatrick, Rel. #11, 11/18) xv LIKELIHOOD OF CONFUSION

§ 4:13 Parody...... 4-77 § 4:14 Combining Complainant’s Marks...... 4-78

Chapter 5 Product Relatedness

§ 5:1 Governing Principles and Interests ...... 5-1 § 5:1.1 Extent of the Right ...... 5-2 § 5:1.2 Limitation of the Right ...... 5-3 § 5:1.3 Three Product Categories ...... 5-5 § 5:2 Relatedness Is Variable and a Matter of Degree ...... 5-6 § 5:3 Mind Over Matter ...... 5-8 § 5:4 Bases for Inferring Consumer Perception of Product Relatedness...... 5-11 § 5:5 Generalizing the Products ...... 5-16 § 5:6 Practices of the Parties and the Trade...... 5-19 § 5:7 Diversification of Products Under the Same Mark ...... 5-22 § 5:8 Comparative Quality ...... 5-26 § 5:9 Comparative Price ...... 5-29 § 5:10 Expansion/Intervening Rights...... 5-30 § 5:11 Effect of Registration ...... 5-38 § 5:12 Channels of Trade...... 5-39 § 5:12.1 General Principles ...... 5-39 § 5:12.2 Sales in Same Stores...... 5-44 § 5:12.3 Store Sections or Departments...... 5-46 § 5:12.4 Advertising ...... 5-47 § 5:12.5 Institutional Purchasers ...... 5-49 § 5:12.6 Wholesale Versus Retail...... 5-50 § 5:12.7 Internet...... 5-52 § 5:12.8 Geographic Markets ...... 5-52

Chapter 6 The Consumers and Their Degree of Care

§ 6:1 Identifying the Relevant Public...... 6-1 § 6:2 Standard of Care...... 6-3 § 6:3 Mixed Types of Consumers ...... 6-7 § 6:4 Lower Degree of Ordinary Care...... 6-9 § 6:5 Higher Degree of Ordinary Care ...... 6-13

Chapter 7 Actual Confusion

§ 7:1 Actual Confusion Not Required ...... 7-2 § 7:2 Weight of the Evidence ...... 7-2 § 7:3 Quantum of Proof ...... 7-4 § 7:4 Types of Confused Persons ...... 7-6 § 7:5 Types and Degree of Confusion...... 7-11

xvi Table of Contents

§ 7:6 Admissibility ...... 7-15 § 7:7 Defendant’s Exploitation of Lack of Actual Confusion.....7-18 § 7:8 Plaintiff’s Explanation of Lack of Actual Confusion...... 7-26 § 7:9 Defendant’s Explanation and Rebuttal of Actual Confusion...... 7-31 § 7:9.1 Causation ...... 7-31 § 7:9.2 Bias...... 7-35 § 7:9.3 Vagueness ...... 7-36 § 7:9.4 Short-Lived Confusion...... 7-38 § 7:9.5 Actual Reverse Confusion ...... 7-39 § 7:10 Surveys ...... 7-39 § 7:10.1 Universe ...... 7-43 § 7:10.2 Setting ...... 7-47 § 7:10.3 Stimulus ...... 7-48 § 7:10.4 Control ...... 7-50 § 7:10.5 Questions ...... 7-52 § 7:10.6 Rate of Confusion ...... 7-54

Chapter 8 The Junior User’s Intent

§ 8:1 Intent to Confuse Not Required; Good Faith Not a Defense ...... 8-1 § 8:2 Knowledge ...... 8-5 § 8:3 Wrongful Intent ...... 8-8 § 8:3.1 Type and Weight of the Evidence...... 8-11 § 8:3.2 Presumption or Inference of Likelihood of Confusion...... 8-12 § 8:3.3 Similarity of the Marks ...... 8-17 § 8:3.4 Prior Contacts Between the Parties ...... 8-20 § 8:3.5 Continued Use After Protest ...... 8-21 § 8:3.6 Other Indicators of Bad Faith...... 8-22 § 8:4 Rightful Intent...... 8-28 § 8:4.1 Explanation and Persuasion ...... 8-28 § 8:4.2 Intent to Compete...... 8-29 § 8:4.3 Intent to Copy...... 8-32 [A] Functional Features; Ideas and Concepts ...... 8-33 [B] Generic/Descriptive Terms ...... 8-35 [C] Territorially Remote Marks ...... 8-35 [D] Otherwise When Likelihood of Confusion Is Not Indicated ...... 8-36 § 8:4.4 Intent to Parody or Amuse ...... 8-36 § 8:4.5 Other Indicators of Good Faith ...... 8-37 § 8:5 Trademark Searches and Advice of Counsel...... 8-40

(Kirkpatrick, Rel. #11, 11/18) xvii LIKELIHOOD OF CONFUSION

Appendix A Color Illustrations of Trademark and Infringement Cases ...... App. A-1

Afterword...... A-1

Further Reading...... FR-1

Table of Cases ...... T-1

Index ...... I-1

xviii Table of Abbreviations

Lanham Act* United States trademark law, 15 U.S.C. § 1051 et seq. PTO United States Patent and Trademark Office Restatement (old) Restatement of the Law of Torts (American Law Institute, 1938) Restatement (new) Restatement (Third) of the Law of Unfair Competition (American Law Institute, 1995) TBMP* TTAB Manual of Procedure (PTO 1995) TMEP* Trademark Manual of Examining Procedure (PTO) TMR* The Trademark Reporter, published bimonthly by the International Trademark Association, New York City TMRP* Trademark Rules of Practice, 37 Code of Federal Regulations, Part 2 TTAB Trademark Trial and Appeal Board (PTO) U.S.C. United States Code U.S.P.Q. United States Patents Quarterly, now in its U.S.P.Q.2d second series, published by the Bureau of National Affairs, Washington, D.C.

—————— * Available at www.uspto.gov.

(Kirkpatrick, Rel. #11, 11/18) xix

Preface

This book is about a part of trademark law, which is a part of the law of unfair competition and of intellectual property law.1 The three main kinds of intellectual property are patents, trade- marks, and copyrights.2 All three are exceptions to the general policy which permits and even favors the right to copy others’ products in order to compete, competition being “a fundamental premise of the free enterprise system.”3 The three exceptions are themselves thought to serve the same end by different, complementary means. Exclusive trademark rights, in particular, are said to foster competition; trade- mark infringement is a kind of unfair competition. are common law properties4 and trademark infringe- ment is a common law tort. Both the property and the tort are enhanced by state and federal laws and regulations.5 “Unlike the related fields of patent and copyright law, the Constitution does not grant Congress the express authority to establish laws governing trademarks. See U.S. Const. art. I, § 8. Thus to regulate trademarks, Congress must rely on its power to regulate interstate and foreign commerce.”5.1 “Trademark” is a word used generally to identify four different types of trade symbols. Trademark. “A trademark is a word, name, symbol, device or other designation, or a combination of such designations, that is

—————— 1. Moseley v. V Secret Catalogue, 537 U.S. 418, 65 U.S.P.Q.2d 1801, 1805 (2003) (“Traditional law is a part of the broader law of unfair competition that has its sources in English common law, and was largely codified in the Trademark Act of 1946 (Lanham Act). That law broadly prohibits uses of trademarks, trade names, and trade dress that are likely to cause confusion about the source of a product or service.”) (citations omitted). 2. L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 1 U.S.P.Q.2d 1753, 1755 (1st Cir. 1987) (“A trademark is a form of intellectual property.”). 3. RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 1 cmt. a (1995). 4. Miller v. Glenn Miller Prods., Inc., 454 F.3d 975, 979, 79 U.S.P.Q.2d 1545 (9th Cir. 2006). 5. See sections 1:1–1:2; 1:8.3; 3:7. 5.1. Dorpan, S.L. v. Hotel Meliá, Inc., 728 F.3d 55, 2013 WL 4531783, at n.9 (1st Cir. 2013).

(Kirkpatrick, Rel. #11, 11/18) xxi LIKELIHOOD OF CONFUSION

distinctive of a person’s goods or services and that is used in a manner that identifies those goods or services and distinguishes them from the goods or services of others.”6 . A service mark is a trademark used in connection with the advertising and sale of services.7 Trade Dress. Trade dress is the distinctive, nonfunctional design of packaging, labels, containers, displays, decor, products, prod- uct features, or combinations of product features constituting the image of goods or services as presented to prospective purchasers.8 . A trade name is any name used to identify a business.9 The essential function of all these trademark properties is to symbolize the goodwill of the particular goods, services, or businesses for which they are used.10 “Goodwill may be defined as the favorable consideration shown by the purchasing public to goods known to emanate from a particular source.”11 It is in this sense that trademarks are intellectual or psychological in nature.12 “The protection of trade-marks is the law’s recognition of

——————

6. RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 9 (1995). 7. Id.; 15 U.S.C. § 1127. 8. RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 16 (1995). 9. 15 U.S.C. § 1127. 10. Beech-Nut Packing Co. v. P. Lorillard Co., 273 U.S. 629, 632 (1927) (“A trademark . . . [p]rimarily . . . is a distinguishable token devised or picked out with the intent to appropriate it to a particular class of goods and with the hope that it will come to symbolize goodwill.”); Indus. Rayon Corp. v. Dutchess Underwear, Inc., 92 F.2d 33, 35 (2d Cir. 1937) (Learned Hand, J.) (“A trade-mark is not property in the ordinary sense but only a word or symbol indicating the origin of a commercial product.”); see 15 U.S.C. § 1060 (providing for assignment of marks “with that part of the goodwill of the business connected with the use of and symbolized by the mark”). 11. White Tower Sys., Inc. v. White Castle Sys., 90 F.2d 67, 69 (6th Cir. 1937). Meridian Mut. Ins. Co. v. Meridian Ins. Grp., Inc., 128 F.3d 1111, 1117, 44 U.S.P.Q.2d 1545 (7th Cir. 1997) (goodwill is “the advantage or benefit, which is acquired by an establishment, beyond the mere value of the capital, stock, funds, or property employed therein, in consequence of the general public patronage and encouragement which it receives from con- stant or habitual customers”) (citations omitted). 12. See Jacoby, The Psychology Foundations of Trademark Law: Secondary Meaning, Genericism, Fame, Confusion and Dilution, 91 TRADEMARK REP. 1013 (2001) (citing treatise); In re Beaunit Mills, Inc., 274 F.2d 436, 437, 124 U.S.P.Q. 370 (C.C.P.A. 1960) (“Considering the diverse reactions of purchasers to the psychological impact of trademarks, it is perhaps going too far to say that they will react in any particular way. . . .”).

xxii Preface the psychological function of symbols.”13 It follows that the question of trademark infringement is primarily one of the psychology— cognitive and behavioral—of consumers. A mark infringes when it is likely to cause a mental state of confusion in an appreciable number of consumers. Whether such confusion is likely can rarely if ever be decided on the basis of direct evidence. The likely mental state of a large consumer population is elusive; the analyst learns to expect the unexpected. The law has developed a complex analytical strategy with numerous rules by which the likely mental state is inferred from the objective facts of the given case. This book does not propose what likelihood of confusion law ought to be, which I leave to professors and legislators. Nor do I offer, with a few imperative exceptions, an evolutionary history of the law. The book is confined to what confusion law is, difficult enough a task in a notoriously elusive field. This is a practical book from Practising Law Institute for trademark practitioners, and states the effectual law pro and contra on the issues. Nor do I consider commercial innovations, such as Internet sales and social media, to be special areas requiring separate treatment. The multi-factor likelihood of confusion test— the spine of this book—is designed to accommodate all types of infringement cases; that is one of the features and advantages of the law’s flexibility and adaptability. (See sections 2:5–2:6.) Depending on the needs and special circumstances of each case in the context of the relevant economy or marketplace, litigators and judges may modify and draw subsets of the factors—an approved approach, the most durable, reliable, and practical. In the process of outlining the analysis and compiling the main rules, I have found that the formulation—“the only rule is that there are no rules”—is tempting but not quite right. The only “rule” in likelihood of confusion cases is that no rule is meaningful unless it is applied to the facts for the purpose of understanding the consumer ’s expectations, perceptions, and memory of the trademarks at issue.14

—————— 13. Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203, 53 U.S.P.Q. 323 (1942). 14. Brennan’s, Inc. v. Brennan’s Rest., L.L.C., 360 F.3d 125, 133, 69 U.S.P.Q.2d 1939, 1945 (2d Cir. 2004) (“likelihood of confusion is related to consumer expectations”); Westchester Media Co. v. PRL USA Holdings, Inc., 214 F.3d 658, 55 U.S.P.Q.2d 1225, 1231 (5th Cir. 2000) (“consumer perception is the controlling factor”); In re Infinity Broad., 60 U.S.P.Q.2d 1214, 1219 (T.T.A.B. 2001) (“[W]e have kept in mind the normal fallibility of human memory over time and the fact that consumers retain a general, rather than a specific impression of trademarks/service marks encountered in the marketplace.”).

(Kirkpatrick, Rel. #11, 11/18) xxiii LIKELIHOOD OF CONFUSION

Without constant reference to this psychology, all the talk to follow of multi-factor tests, “dominant portions,” product relatedness, channels of trade, etc. is unhelpful. Without check, such talk easily and often assumes a life of its own.15

—————— 15. “[O]ne way of going astray in legal analysis is to focus on the semantics of a rule rather than its purpose.” Peaceable Planet v. Ty, 362 F.3d 986, 987, 70 U.S.P.Q.2d 1386, 1387 (7th Cir. 2004) (Posner, J.).

xxiv