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

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.