State of Initial Interest Confusion After Promatek by Eric Goldman

State of Initial Interest Confusion After Promatek v. Equitrac
Eric Goldman
Marquette University Law School
eric.goldman@marquette.edu
http://eric_goldman.tripod.com

Case citations can be found at http://eric_goldman.tripod.com/resources/iiccasesummary.htm.

1.      What is Initial Interest Confusion?

  • “The use of another’s trademark in a manner reasonably calculated to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion” (Brookfield)
  • Initially, Initial Interest Confusion was part of multi-factor likelihood of confusion analysis, evaluated under:
    • Purchaser care/sophistication
    • Actual confusion
    • Competitive proximity

2.      Brookfield v. West Coast, 174 F.3d 1056 (9th Cir. April 22, 1999)

  • Video rental store launches website at moviebuff.com and uses “moviebuff” in metatags
  • High-end entertainment publisher has senior TM rights in “moviebuff”
  • Parties have some competitive proximity
    • Court says some searchers might settle for defendant’s database instead of continuing to search for plaintiff’s
  • Using standard multi-factor test, court holds domain name infringes
  • A word about search engine operations
    • Robots index every word on web pages
    • Consumers do keyword searches
    • Search engines display sites containing keyword
    • Relevancy algorithms historically gave credit for metatags placement, but algorithms have changed
  • Court says standard multi-factor test doesn’t apply to metatag analysis
  • Metatags create initial interest confusion
  • The billboard analogy

3.      Some 7th Circuit Initial Interest Confusion Cases

  • Dorr-Oliver, 94 F.3d 376 (1996)
    • Trade dress case between corn wet milling manufacturers
    • Initial Interest Confusion requires competitive passing-off: “luring potential customers away from a product by initially passing off its goods as those of the producer’s”—not found here
  • Rust Environment, 131 F.3d 1210 (1997)
    • Former employees launch environmental consulting firm under abandoned name
    • Initial Interest Confusion evaluated under purchaser care factor—not found
  • Syndicate Sales, 192 F.3d 633 (1999)
    • Trade dress case involving plastic baskets for funeral bouquets
    • Initial Interest Confusion doesn’t overcome a finding of no consumer confusion
  • Eli Lilly, 233 F.3d 456 (2000)
    • Natural Prozac alternative marketed as “Herbrozac” and “Prozac” in metatags
    • District court analyzes Initial Interest Confusion under actual confusion factor and finds likelihood of confusion
    • 7th circuit reverses Initial Interest Confusion analysis but affirms ruling; bad faith demonstrated by metatag usage

4.      Promatek v. Equitrac, 300 F.3d 808 (7th Cir. Aug. 13, 2002, amended Oct. 18, 2002)

  • w  Defendant includes competitor’s name in metatags
    • n   But Equitrac also provided maintenance and service for Copitrak equipment
  • w  Court evaluates Initial Interest Confusion under purchaser care factor
  • Likelihood of confusion found due to goodwill misappropriation
    • Redefines Initial Interest Confusion: “when a customer is lured to a product by the similarity of the mark, even if the customer realizes the true source of the goods before the sale is consummated”
    • Duration of confusion irrelevant; “Equitrac cannot unring the bell”
    • “Customers who are directed to Equitrac’s webpage are likely to learn more about Equitrac and its products before beginning a new search for Promatek and Copitrak”
  • Later, via amendment, court says metatag usage is actionable only when TM is used to deceive consumers into thinking Equitrac was Copitrak
    • How did Equitrak’s metatags deceive?
  • Is “passing off” an element of Initial Interest Confusion or not?
    • AM Gen. v. DaimlerChrysler (Nov. 18, 2002)
  • Remedy: Equitrac’s home page displays disclaimer containing plaintiff’s TMs
    • Who won this case?

5.      If you are plaintiff…

  • Initial Interest Confusion permits you to bypass standard likelihood of confusion multi-factor test (Brookfield)
  • Initial Interest Confusion occurs when defendant tries to influence search listing placement through metatags or otherwise (Eli Lilly, Promatek, JK Harris)
  • Initial Interest Confusion occurs when consumers experience momentary confusion (NYSSCPA, OBH)
  • Initial Interest Confusion occurs when defendant obtain marketplace attention through goodwill association (Mobil Oil, Elvis Presley, Promatek)

6.      If you are defendant…

  • Initial Interest Confusion requires passing off/bait ‘n’ switch (Dorr-Oliver, Northland Ins.)
  • No Initial Interest Confusion unless word is used as source identifier (Netscape)
  • Nominative fair use (Welles)
    • Product not readily identifiable without the mark
    • Mark used only as reasonably necessary to identify the product
    • No suggestion of sponsorship or endorsement
  • Disclaimers cure any Initial Interest Confusion (Bihari)
  • Initial Interest Confusion only applies if parties are competitors (Dorr-Oliver, Netscape, TNN, Checkpoint, Clue)
  • Initial Interest Confusion is insufficient confusion (TeleTech, Chatam, Strick)

7.      Academic Criticism

  • Initial Interest Confusion lacks definition and structure
  • Efforts to attract attention are everywhere
    • By definition, marketing tries to “capture initial consumer attention”
    • Search engines index every word
    • Possibility v. likelihood of confusion
  • TM owners can use Initial Interest Confusion to curtail publication of criticism, parody, neutral information, comparative advertising and ads by ancillary servicers without any real confusion
  • Courts make questionable assumptions about consumer/search behavior
    • Consumers expect perfect relevancy in searches
    • Consumers searching on TM expect to find only TM owner
    • Consumers seeing search listing are confused about what’s at the destination
    • Consumers stop their searches mid-stream
    • Hitting the back button is a “harm”
    • Metatags make a difference in relevancy algorithms
    • Consumers accept irrelevant search results
  • An emerging TM right in gross?.
Visit Full Blog