Week 5: Trademark 2 – Trademark Infringement and Dilution

trademark infringement

Week 5: Trademark 2 – Trademark Infringement and Dilution

“Likelihood of Confusion … Initial Interest Confusion … Trademark Dilution”
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Summaries

  • Week 5: Trademark 2: Trademark Infringement and Dilution > Likelihood of Confusion > Likelihood of Confusion
  • Week 5: Trademark 2: Trademark Infringement and Dilution > Likelihood of Confusion > Other Forms of Confusion
  • Week 5: Trademark 2: Trademark Infringement and Dilution > Initial Interest Confusion > Initial Interest Confusion
  • Week 5: Trademark 2: Trademark Infringement and Dilution > Trademark Dilution > Trademark Dilution
  • Week 5: Trademark 2: Trademark Infringement and Dilution > Trademark Dilution > Types of Dilution
  • Week 5: Trademark 2: Trademark Infringement and Dilution > Trademark Dilution > Dilution of the Louis Vuitton Mark
  • Week 5: Trademark 2: Trademark Infringement and Dilution > Trademark Dilution > Infringement Analysis Summary

Week 5: Trademark 2: Trademark Infringement and Dilution > Likelihood of Confusion > Likelihood of Confusion

  • This lecture is about trademark infringement and trademark dilution.
  • Now that we have learned what a trademark is and what the most important limitation on what you can get protection for under the trademark law is, we’re turning now to trademark infringement.
  • We’re going to talk about a new and emerging trend in trademark law, which is initial interest confusion, expanding the scope of trademarks beyond some of their traditional boundaries.
  • Then we’re going to talk about the area of trademark dilution, which is really also another new area of thinking in the trademark law and protecting the trademark in a way that’s quite different than the likelihood of confusion analysis.
  • Have you infringed consumers? And the reason for this is because we want to try and protect under the trademark law that link that consumers have between the trademark and the underlying good or service to which it is most closely represented.
  • So the stronger the trademark is, the more likely that there is going to be potential confusion between the mark and the use of it by another or the use of something similar by another.
  • That’s because the stronger the mark is, the more consumers are going to associate it with a particular underlying source, and so they’re more likely to be confused by a very similar statement.
  • So if Sleekcraft was a very strong mark, for example, then they’d be more likely to be confused by Slickcraft, because you would be so used to in your mind thinking about the source of Sleekcraft.
  • The proximity of the goods- and this is both in terms of geographic proximity, meaning are they sold in the same regional or territorial vicinity, but also more importantly, are the goods closely associated in the market? So for example, if one good is a super high-end, very expensive, exclusive product and the other is a very inexpensive commodity product, we would say those goods are not very close together.
  • That is a fact that is usually pretty hard, and the reason is that people buy products for lots of reasons and it’s pretty difficult to get to the standards of sort of scientific evidence that you can show that the particular reason they chose one product over another had to do with their confusion about what the good was.
  • If you can show actual confusion- if you can show, for example, using survey data that people would be confused as to who the underlying manufacturer was of a Sleekcraft versus Slickcraft- then that would be evidence of likely confusion, as well.
  • Again, the closer the marketing channels are and the more overlap there is between those marketing channels, the more likely it is that you’re going to find confusion, and so it’s going to weigh in favor of trademark infringement.
  • More exclusive goods are likely to have a set of relevant consumers who are much more careful than consumers who are buying staples or commodities, for example.
  • So in the example of the expensive watch, you would be less likely to find a likelihood of confusion because you would assume that people are not going to automatically associate, to take that mental shortcut, between the trademark and the underlying source.
  • They’re going to do more investigation, they’re going to take more care, and maybe even the relevant consumer is going to be somewhat more savvy, sophisticated, and more prone to searching for information about the goods rather than just relying on the marks.
  • Then the likelihood of expansion of the product line- so for example, if the product lines were somewhat different at this point, if one was a higher-end good and a lower-end good, or maybe they used different kinds of marketing channels or they were in different territories, that would as of now weigh against a likelihood of confusion and infringement on that ground.
  • On the other hand, if it seemed like one or both of these manufacturers were going to expand their product lines so that there would be more conflict, more overlap, then that’s going to increase the likelihood of confusion, and therefore the likelihood that infringement of a trademark would be found.
  • At the end of the day, the goal here is to try and figure out whether or not the goodwill that the trademark has has been appropriated.

Week 5: Trademark 2: Trademark Infringement and Dilution > Likelihood of Confusion > Other Forms of Confusion

  • In addition to the traditional likelihood of confusion analysis, there’s also other sorts of confusions that come up in trademark law.
  • When we talk about likelihood of confusion, it’s really clear, what we’re trying to do is maintain the fact that people would be confused about that Coca Cola can, because of the images on it.
  • Now the infringement then, in the likelihood of confusion analysis, is likely confusion about source.
  • So there may be confusion as to source for non-competing goods.
  • This is for example, you might say that a trademark is strong enough that if you saw the word apple, for example, that you might still, even if it was on a car, you might think it was associated with Apple Computer somehow.
  • Courts have begun to pay attention to even confusion as to source when there’s non-competing goods.
  • Confusion as to sponsorship, right? So you would understand, for example, that Apple is not going to sponsor a sports league or something.
  • So courts have begun to recognize that as a potential area of confusion as well.
  • Now you might ask whether that makes sense, because if it’s post-sale confusion by definition, you haven’t confused any sales.
  • Initial interest confusion, we’ll talk about in a minute, is another special type of confusion that’s emerged in recent years in the cases, and is becoming an important part, particularly in the internet era.
  • Dilution is very different from likelihood of confusion for reasons that we will talk about in a moment.
  • So let’s talk about initial interest confusion.
  • The basic element here is that there’s consumer confusion involved in initial interest confusion, but not at or near the point of sale.
  • If there’s been some deliberate action by the alleged infringer to take advantage of the good will associated with the trademark in order to manipulate the consumer in some way, although there’s no confusion at the point of sale.
  • So the classic example of initial interest confusion might be, you’re driving along the highway and you see a sign, a billboard for example, it says McDonald’s, exit here.
  • Either way, that argument is that they have done something there, that confusion that they caused, that initial interest confusion, is actionable, is infringement.
  • Because it’s possible that when they divert you, they divert you off the highway, they can capture your sales or your interests long enough to prevent you from searching for and finding what you really wanted to find, which was the McDonald’s restaurant.
  • One question to ask yourself is, does this make sense given our theory of trademarks? If the goal is to prevent the- is to increase the connection between the Coca Cola logo and the underlying company in Atlanta, it’s hard to see how this initial interest confusion can do a lot to interrupt that connection.
  • So there’s no confusion as to the source of the goods that you actually purchased.
  • So one of the questions that the courts have had, lots of people commenting on court cases have had, is weather initial interest confusion fits into our traditional theories of trademark law.
  • Because it used to be that when you talked about traditional likelihood of confusion analysis, it was really at the point of sale or pretty close to the point of sale.
  • Here there’s no mistake in the context of initial interest confusion, there’s really no mistake it all, except for that initial half second mistake, maybe one second mistake, when you got off the highway.

Week 5: Trademark 2: Trademark Infringement and Dilution > Initial Interest Confusion > Initial Interest Confusion

  • So let’s look at initial interest confusion in actual cases.
  • I mentioned at the outset of the discussion the initial interest confusion was particularly interesting in the internet context.
  • In the early era of web pages, meta tags were embedded in HTML code, in web page code, as a way for the creator of the web page to trigger search engines or to otherwise signal the content of the page to automated systems.
  • They’re just usable for purposes of search engine indexing and other types of categorization by content.
  • That’s a case that’s been held out to be interesting.
  • Because there are so many ways that the technology can divert people from what they’re looking for.
  • What that would mean that if somebody searched for Coca-Cola, they would get the search they were looking for.
  • That’s a very interesting and challenging problem for trademark law because what Google is doing there is not direct use of the mark.
  • They’re at the same time managing to make money to gain financial advantage by the goodwill that’s built up in these marks and these words and phrases by the trademark owners.
  • So that’s a particularly challenging way that that initial interest confusion plays in trademark law.
  • Lots of ways that you can put content in web pages or other types of materials online in a way that it’s not perceivable by human beings, but is nonetheless potentially as important, if not more important, for automated search robots and things like that.
  • We traditionally of course think of trademarks as being, you know, you show somebody a word and therefore you’re confusing them as to source.
  • This is very different in online context when you can hide the words, for example, and avoid showing them the words, and yet still potentially divert their attention away from the owner of the mark.
  • So one of the things to think about is that even if you believe that there should be a cause of action for diversion, for diverting people away from the initial thing that they were searching for, the fact that in the online context it’s very easy to sort of navigate back and find what you were looking for.
  • In the online context, it’s so easy to go between web pages and between online services that maybe initial interest confusion is something we shouldn’t really care about because the costs of it are so low.
  • So one of the more recent cases of initial interest confusion actually didn’t have a lot to do with online at all.
  • What it had to do- and it’s an interesting statement about the way that we think about initial interest confusion- it had to do with guitars.
  • So Gibson has a classic guitar line called the Les Paul line of guitars that has a distinctive shape shown here.
  • With the horn, I understand the horn below is quite distinctive to people who know guitars.
  • Gibson makes the argument, or made the argument, that when Reed Smith developed a line of guitars, it had a similar silhouette, very similar silhouette.
  • That what they were doing was violating the trademark on the shape of the guitar that Gibson had and not doing it by directly taking the mark.
  • That when you looked across the music store at the way that typically most music stores display guitars on a rack on a wall, that you would see these Reed Smith guitars and see the familiar silhouette.
  • You would think you were going over to see a Les Paul guitar.
  • You would walk and go and look at the Reed Smith guitars.
  • Therefore the sales would be potentially diverted from the Gibson guitars.
  • Even looking across a crowded music store can be enough in some cases in the minds of trademark owners to cause a diversion of interest in the consumer, and therefore an infringement.
  • I think we’re going to see more cases of initial interest confusion coming forward in the next several years.

Week 5: Trademark 2: Trademark Infringement and Dilution > Trademark Dilution > Trademark Dilution 

  • We protect it because it identifies a source- an Apple computer company and that we want to protect that linkage between the name and the source.
  • It’s the blurring of that link- the interruption on the link between the mark and the underlying source.
  • The marks are channeled in the traditional way, right? You remember the Sleekcraft versus Slickcraft analysis.
  • Many of those factors had to do with how close marks were.
  • How close were the products? Where they competing with each other? Where they not competing with each other? Where they in the same geographic territory? Where they not? And so in the likelihood of confusion analysis, we think of marks as being channeled.
  • So it’s perfectly OK to have when an Apple Computer and an Apple Records, because there would not be a likelihood of confusion between those two because the products are channeled.
  • We’re moving, instead, to a different world of trademarks.
  • In the world of dilution and though new world of trademarks is thinking more of marks as property rights in and of themselves.
  • In this way, marks become more like patent rights or copyrights in the sense that they have real property rights associated with themselves for their own sake.
  • That’s different than associating property rights with them because of their source identification.
  • The reason now that we are increasingly protecting Apple is because there’s investments.
  • The damage that we think of in the dilution context is quite different than the likelihood of confusion context.
  • The damage of dilution is harm to that property right.
  • Most the time in a dilution action, by definition, consumers are not confused at all.
  • So instead what we’re worried about in the dilution remedy area is it that the consumers will think differently about the marks.
  • That somehow the marks will be weakened, will be diminished in their value, and that because diminishment of value means that there’s less incentive to produce or to create that value to invest in that those marks- that’s a harm that we want to prevent and the dilution remedy.
  • The other good thing that’s important to understand about the trend towards dilution as a remedy in trademark law is that it unchannels the marks.
  • So when I said earlier that it was OK to have Apple Computer and Apple Records, we might not think that going forward.
  • Because we might think that the fact that there’s an Apple Records or because Apple Records actually started before Apple Computer, that there’s an Apple computer- that there’s sort of no ability for multiple users of the same mark in the marketplace and that marks they’re no longer channeled into particular territories, into a particular products anymore, that, instead, marks are themselves pieces of property that can expand throughout a series of both geographic areas and product lines.

Week 5: Trademark 2: Trademark Infringement and Dilution > Trademark Dilution > Types of Dilution

  • So what that means is a defendant’s use of something as a trademark, so some sort of designation of source used by the defendant that associates itself with the famous mark, So when I say Apple Computer to associate myself with, or I say Apple for example to associate myself with my radios, for example, that creates an association that used designation of source.
  • My use of Apple creates an association with the famous mark Apple, and therefore creates a potential for dilution.
  • So it’s the similarity between the two that creates this association, and that association has to impair the distinctiveness of the famous mark.
  • The idea here is that even if I’m not competing, so even if my goods don’t compete at all with the famous mark, then I can still be liable for dilution under the blurring context because what I’ve done is created a similar mark that impairs the distinctiveness of the famous mark.
  • So tarnishment is slightly different, and that is, again, an association arising from a similarity between a designation of source and a famous mark that harms the reputation of the famous mark.
  • So the harm here isn’t that people associate the mark with the source less or associate the distinctive quality of the mark less.
  • One factor is the degree of the similarity between the competing marks, so how close have I come to directly copying, directly matching the famous mark is an important qualification.
  • How distinctive the famous mark- so again, the more distinctive the mark is the more likely it is I’m going to dilute it because I have more likely to get an association with it between what I’m doing and the famous mark.
  • The degree of the recognition of the famous mark- the more broadly recognized the mark is, the more likely it is to be diluted because people are going to automatically associate my use of something that’s similar with that famous mark.
  • The degree of exclusive use of the famous mark- so to the extent that the only use of the mark is for one particular good or service, then that makes it more likely that the mark would be diluted.
  • If I am intending to create an association with the mark, then I’m more likely to be found to be diluting that mark.
  • Then any evidence of actual association- so if there’s actual evidence, either survey or direct evidence of consumers where you can show that what people are doing is making this association between my use of a mark and something that’s a similar famous mark, then that’s important evidence in favor of dilution.

Week 5: Trademark 2: Trademark Infringement and Dilution > Trademark Dilution > Dilution of the Louis Vuitton Mark

  • So I found an interesting case illuminating the dilution [? remedy ?] in trademark law is the Louis Vuitton versus Haute Diggity Dog case.
  • You can see some examples here of the famous Louis Vuitton logos.
  • Louis Vuitton did not find this amusing and sued Haute Diggity Dog arguing dilution.
  • Louis Vuitton was not able to show that anybody really thought that the company Louis Vuitton- who makes the handbags and other luxury goods- was in fact making these dog toys.
  • Nobody really thinks that there’s any linkage between Louis Vuitton and these goods and therefore that’s it.
  • That’s not the end of the story that indeed what Louis Vuitton can argue is something broader.
  • So in order to win Louis Vuitton has to show that it owns a famous mark- that the plaintiff owns a famous mark that the defendant- here here, Haute Diggity Dog- is using a mark who’s similarity creates an association between the defendant’s mark and the plaintiff’s famous mark.
  • Here- Louis Vuitton owns a famous mark so the Louis Vuitton name is a famous mark.
  • Or using not the plaintiff’s famous mark but using its own mark- here- Chewy Vuitton, for example.
  • Here are very stylized versions- embroidered versions- of the Louis Vuitton cherries and other symbols.
  • Haute Diggity Dog was clearly intending to evoke in consumers’ minds the luxury brand- the luxury goods created by Louis Vuitton.
  • What they argue is that when Haute Diggity Dog sells these goods that the fact that they’re using very similar logos means that in the consumers’ minds the Louis Vuitton mark is therefore on more products than what Louis Vuitton would like.
  • What Louis Vuitton tries to do- they say- is really maintain control over its brand name.
  • Now the fact that what consumers are seeing is a very close facsimile of the Louis Vuitton marks in very different products, very different channels- pet stores- and for very different goods than what they would otherwise see and that is what causes the blurring because now consumers don’t associate the Louis Vuitton trademarks with the strong, very consistent brand that they did before.
  • The tarnishment argument that Louis Vuitton made is that dogs could potentially choke and harm themselves using these dog toys and that would then bring Louis Vuitton’s reputation into play and diminish it because of harm to dogs.
  • The blurring claim is a more difficult question because hat Chewy Vuitton is doing is in fact- if you look back at the factors- pretty much exactly what the definition of dilution is.
  • The entire point indeed of using Chewy Vuitton is to associate with the famous mark.
  • So Louis Vuitton says, well that’s an easy case of dilution.
  • Because consumers would get the joke, they wouldn’t indeed think any less- or even indeed think differently at all- about the Louis Vuitton mark.
  • You might argue that because of this consumers might even think more of the Louis Vuitton mark.
  • So indeed one of the interesting things about the Louis Vuitton versus Haute Diggity Dog case is that the strength of the Louis Vuitton mark- that it was so strong, so distinctive, so famous, that it meant that it was less likely that the dilution would actually be found.
  • Because the court thought that there was almost no way that the joke here wouldn’t be understood by the consumers because Louis Vuitton had been so successful.
  • So one question is, why is this a successful parody? Does this case open up the door for me to directly rip off the Louis Vuitton trademarks and say, oh what I’m doing is in the name of parody.

Week 5: Trademark 2: Trademark Infringement and Dilution > Trademark Dilution > Infringement Analysis SummaryV

  • Remember the Gibson Les Paul guitars? And that’s an expansion of marks beyond just the point of purchase or the point of search to even before then when people are initially interested in the marks.
  • Then there are two types, the blurring type, which means you diminish the distinctiveness of the mark, and then the tarnishment type, which means you have harmed the mark’s reputation in some way.
  • Again, we learn from the Hot Diggity Dog case that parodies, close parodies that were successful will not be dilution because the consumers would understand that it was a joke and therefore, they would know- it would not undermine the distinctive quality of the original famous mark.
  • We think of the damage as being consumer confusion, and we think of marks as being channeled in particular geographic or product line areas.
  • Increasingly, we’re moving to a world- and you see some of this with the initial interest confusion but mostly with the dilution remedy, which is we think of marks as property rights in and of themselves, freestanding property rights, not necessarily just related to source identification.
  • So what we’re seeing is this trend towards marks being more powerful, broader, and having more impact in the marketplace than ever before.
  • The question asked going forward is whether or not we’ve established enough safeguards into trademark law in order to keep the balance between trademark owners and the public for what we want to get out of marks in the marketplace.

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