U.S. trademark Law
Confusion for purposes of the Lanham Act is shown where there is a
|“||"likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question" or where "consumers are likely to believe that the challenged use of a trademark is somehow sponsored, endorsed, or authorized by its owner."||”|
Thus, "[c]onfusion" for purposes of the Lanham Act includes confusion "of any kind, including confusion as to source, sponsorship, affiliation, connection or identification."
Under the Lanham Act, actionable "confusion" may take a number of forms. In some cases, there may be actual confusion among members of the consuming public, and the plaintiff may be able to demonstrate — even at the preliminary injunction stage of the case — such actual confusion
However, a plaintiff may be unable to prove actual confusion in the market — in some cases because the market for a particular mark or product has not yet developed, or because the plaintiff has acted early enough to prevent actual confusion from developing. Thus, although in order to support a claim of infringement a plaintiff must show a probability, not just a possibility, of confusion. A likelihood of confusion is actionable even absent evidence of actual confusion.
Confusion need not be limited to the "point of sale" to be actionable under the Lanham Act. The Second Circuit has held that confusion among non-purchasers, arising from use of a mark outside of a retail environment after any sale or purchase of a product has concluded, is actionable under the Lanham Act.
- New York Stock Exchange, Inc. v. New York, New York Hotel LLC, 293 F.3d 550 (2d Cir. 2002) (internal citations and quotations omitted).
- Guinness United Distillers & Vintners v. Anheuser-Bush, 64 U.S.P.Q.2d (BNA) 1039, 2002 US Dist. LEXIS 127222002, WL 1543817, at *2 (S.D.N.Y. 2002); Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F.Supp.2d 410, 413-14 (S.D.N.Y. 2002)(full-text).
- E.g., Register.Com, Inc. v. Domain Registry of America, Inc., 2002 WL 31894625, at *11 (S.D.N.Y. 2002); Les Ballets Trockadero de Monte Carlo, Inc. v. Trevino, 945 F. Supp. 563, 41 U.S.P.Q.2d (BNA) 1109 (S.D.N.Y. 1996)(full-text) (confusion among consumers, plaintiff's employees, and defendant's friends sufficient to show actual confusion).
- Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 743, 48 U.S.P.Q.2d (BNA) 1503 (2d Cir. 1998)(full-text).
- E.g., Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70, 8 U.S.P.Q.2d (BNA) 1345 (2d Cir. 1988)(full-text) (finding likelihood of confusion despite lack of evidence of actual confusion); Centaur Comms., Ltd. v. A/S/M Comms., Inc., 830 F.2d 1217, 1227, 4 U.S.P.Q.2d (BNA) 1541 (2d Cir. 1987)(full-text) (finding lack of actual confusion did not undermine district court finding of likelihood of confusion), aff'd, 830 F.2d 1217, 4 U.S.P.Q.2d 1541 (2d Cir. 1987)(full-text); Lexington Management Corp. v. Lexington Capital Partners, 10 F.Supp.2d 271, 286, 47 U.S.P.Q.2d (BNA) 1558 (S.D.N.Y. 1998)(full-text) (lack of evidence of actual confusion neither supported nor detracted from plaintiff's motion for preliminary injunction); Clinique Labs., Inc. v. Dep Corp., 945 F. Supp. 547, 555 (S.D.N.Y. 1996)(full-text).
- Clinique Labs., 945 F.Supp. at 558 (use of disclaimers insufficient to address post-sale confusion among consumers).