The Lawletter Vol 34, No 8, September 21, 2010
Tim Snider—Senior Attorney, Trademarks
In most trademark infringement cases, there is a substantial risk that a consumer will be confused by the infringer's use of the accused mark to lure sales away from the owner of the protected, or senior, mark. The jurisprudence has evolved a doctrine known as "initial interest confusion" that broadens the scope of typical or traditional principles of trademark law as applied to infringement. Initial interest confusion is a "bait and switch" tactic that permits a competitor to lure consumers away from a provider of goods or services by passing off the goods or services as those of the provider, notwithstanding that the confusion is dispelled by the time of sale, and even though the holder of the senior mark may lose no sales in consequence of the use of a confusingly similar mark by the ostensible infringer. See Vail Assocs. v. Vend-Tel-Co., 516 F.3d 853, 872 (10th Cir. 2008).
In other words, the consumer knows by the time of sale that the ersatz "Coke" is not the cola beverage sold under the trademark Coke® but, instead, is a product using a trademark confusingly similar to that of the Coca-Cola Company to attract the consumer's attention. The accused product may not use the Coke® trademark on its packaging, and the seller may even disclaim any association with the Coca-Cola Company. In another typical situation, the infringer's website advertises "Buy your Coke here," when, in fact, the site is selling snack foods, not soft drinks. The unauthorized use of the famous mark is merely a come-on to attract customers who otherwise would not have been attracted to the site. While Coca-Cola loses no sales directly, its mark is used in an unauthorized way that could diminish its value.
Most courts of appeals to have considered the issue have adopted initial interest confusion as an infringement doctrine. See Checkpoint Sys., Inc. v. Check Point Software Techs., 269 F.3d 270, 292 (3d Cir. 2001) (a frequently cited case); McNeil Nutrit'ls, LLC v. Heartland Sweeteners, LLC, 511 F.3d 350, 358 (3d Cir. 2007); Austl. Gold, Inc. v. Hatfield, 436 F.3d 1228, 1238–39 (10th Cir. 2006); Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1018 (9th Cir. 2004); Promatek Indus. v. Equitrac Corp., 300 F.3d 808, 812 (7th Cir. 2002); Mobil Oil Corp. v. Pegasus Petrol. Corp., 818 F.2d 254, 260 (2d Cir. 1987).
One court of appeals has declined to adopt the doctrine at all, seeing no authority in the statute for adopting initial interest confusion as a theory of trademark infringement. See Lamparello v. Falwell, 420 F.3d 309, 316 (4th Cir. 2005). Another court of appeals was skeptical of the applicability of the doctrine in cases of trademark infringement or registration of trademarks. See Weiss Assocs. v. HRL Assocs., 902 F.2d 1546, 1549 (Fed. Cir. 1990). And yet another court of appeals has indicated that although the doctrine might be adopted in some kinds of trademark infringement cases, it would not be applied in all categories of cases of infringement. See Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 423 F.3d 539, 551 n.15 (6th Cir. 2005) (declining to apply the doctrine in a product-shape trademark infringement case).
Now the Eighth Circuit has weighed in on the issue. Recently the court had before it a case involving the alleged infringement of the mark "Sensient Flavors" by the mark "SensoryEffects." Sensient Techs. Corp. v. SensoryEffects Flavor Co., No. 09-2686, 613 F.3d 754 (8th Cir. 2010). One of the arguments used by the aggrieved party was that the offending user's use of the accused mark was infringing by virtue of the doctrine of initial interest confusion. The court, however, was skeptical, reasoning that
[u]nder the [initial interest confusion] doctrine, courts look to factors such as product relatedness and the level of care exercised by customers to determine whether initial interest confusion exists. Here, although the products are similar, the parties agree the customers are sophisticated and exercise a relatively high degree of care in making their purchasing decisions. This sophistication makes it less likely customers will experience initial confusion, ultimately resulting in a benefit to the alleged infringer.
Id. at *8–9.
While the court did not reject the doctrine outright, it made its skepticism about the theory of interest confusion palpable. It is highly unlikely that the doctrine would be received favorably in the Eighth Circuit, even in a case where the facts were more supportive of the proponent's arguments in favor of adopting the doctrine. In this respect, as in other trademark cases, the Eighth Circuit tends to chart its own path. In most of the other circuits, the doctrine of initial interest confusion in a proper case would be received more favorably, and, in some circuits, initial interest confusion is considered an orthodox theory of trademark infringement.