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  • videocam On-Demand
  • card_travel Trademark and Copyright
  • schedule 90 minutes

Trademarks and Reverse, Forward, Post-Sale, and Initial Interest Confusion

Proving or Defending Against Infringement Under the Likelihood of Confusion Standard

$347.00

This course is $0 with these passes:

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Description

Virtually all trademark owners and their counsel wrestle with the challenging issue of the likelihood-of-confusion test for trademark infringement. Understanding the different types of confusion that are actionable under that test is counsel’s first step in avoiding the pitfalls in pursuing or defending against infringement claims.

In its original iteration, the test for infringement turned on the likelihood of mistaken purchasing decisions at the point of sale or, in other words, sales driven by the erroneous belief that the defendant’s goods or services were those of the plaintiff. Moreover, successful infringement claims inevitably were brought by larger companies against smaller ones allegedly seeking to free-ride on the goodwill of the larger companies.

Over time, however, the likelihood-of-confusion inquiry has expanded beyond these traditional boundaries. For example, since an amendment to Section 32 of the Lanham Act in 1962 to eliminate that provision’s focus on the point of sale, courts have increasingly recognized that any kind of confusion is actionable. This includes initial-interest confusion in cases in which a defendant’s use of a mark similar to that of the plaintiff allows the defendant to “get its foot in the door” with a consumer, even if the consumer makes a purchase with full knowledge of the defendant’s identity. It also includes the doctrine of post-sale confusion, which holds that a finding of infringement may rest on likely confusion of parties other than direct purchasers, including observers of an allegedly infringing mark on a product in use by a direct purchaser.

The expansion of the test for infringement also has led to the emergence of claims for reverse confusion in actions in which smaller companies allege that larger companies have violated their rights. Although reverse confusion has become an accepted theory of liability, federal courts differ on its application. For example, the federal circuit courts of appeal are split on the role the strength of the plaintiff’s mark properly should play in a reverse confusion case--should a finding of mark strength favor the plaintiff (as in a conventional forward confusion action), or, alternatively, does such a finding render confusion less likely? The answer may turn on the jurisdiction in question.

Listen as our authoritative panel of IP attorneys discusses the different types of trademark confusion, including reverse confusion, initial-interest confusion, and post-sale confusion. The panel will address the challenges of each type and examine how courts have treated these issues, while in the process identifying best practices for litigating the likelihood-of-confusion standard.

Presented By

Theodore H. Davis
Partner
Kilpatrick Townsend & Stockton LLP

Mr. Davis's practice focuses on domestic and international litigation and client counseling in the fields of trademark, copyright, false advertising, and unfair competition law. He has particular experience in trade dress disputes and with large-scale trademark clearance and registration projects. He has served on the Board of Directors of the International Trademark Association.

Robert D. Litowitz
Partner
Kelly IP, LLP

Mr. Litowitz has over 30 years of experience in litigating patents, trademarks, and other intellectual property rights before U.S. district courts, the ITC, and the TTAB. He has extensive experience leading and managing a range of litigations on such diverse subjects as pharmaceuticals, healthcare products, designs, product configurations, words, symbols, golf courses, and books.

Credit Information
  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.


  • Live Online


    On Demand

Date + Time

  • event

    Wednesday, February 19, 2020

  • schedule

    1:00 p.m. ET./10:00 a.m. PT

  1. Doctrines of trademark confusion
    1. Forward
    2. Reverse
    3. Post-sale
    4. Initial interest
  2. Recent court treatment
  3. Best practices

The panel will review these and other notable questions:

  • How has the landscape shifted regarding the use and acceptance of the reverse confusion doctrine?
  • How are courts treating initial interest confusion and post-sale confusion?
  • What are the pitfalls of pursuing and defending against reverse trademark infringement claims?
  • What kinds of evidence are persuasive to provide likelihood of confusion?