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When is initial-interest confusion trademark infringement actionable?
A trademark battle between sellers of adjustable air mattresses led the U.S. Court of Appeals for the Eighth Circuit to put to bed the question of whether it recognizes a trademark infringement theory already accepted by most federal courts of appeal. More than a decade after sidestepping the question, the court confirmed that it views initial-interest confusion as a valid basis for liability.
District court says “good night” to claim
The plaintiffs own trademark registrations for their mattress products. They alleged the defendants used similar and identical marks in various online advertising formats to divert consumers to the defendants’ website and call center.
Before trial, the trial court rejected an infringement theory based on initial-interest (or pre-sale) confusion — that is, confusion that creates initial customer interest, even though no actual sale results from the confusion. At trial, the court instructed the jury that infringement liability required a showing of likelihood of confusion at the time of purchase. The jury rejected the infringement claims based on that instruction and the plaintiffs appealed.
Appellate court lays down the law
The Eighth Circuit began its analysis by noting that most federal courts of appeals that have considered the legitimacy of the initial-interest theory of infringement liability have recognized it. The theory acknowledges that a trademark owner’s goodwill holds value at all times, not just at the time of purchase.
The theory, the court went on, protects against the threat of a competitor getting a free ride on the back of an established mark’s goodwill — for example, when a consumer incorrectly infers a third party’s affiliation with the owner of the established mark. At least one federal court of appeals has equated initial-interest confusion to a “bait and switch” scheme.
But the Eighth Circuit hadn’t yet definitively weighed in on whether confusion must exist at the time of purchase to support a trademark infringement claim, or if initial confusion is sufficient. In an earlier case, the Eighth Circuit had acknowledged the question, but neither adopted nor rejected the initial-interest confusion theory. Instead, it held that the theory didn’t apply to the case because the relevant consumers were sophisticated commercial purchasers of the goods at issue.
In this case, however, the Eighth Circuit took the opportunity to clarify that the theory may be viable in the jurisdiction in certain circumstances. Specifically, it held that, when a jury question exists as to whether the consumers were sophisticated, a plaintiff shouldn’t be prohibited from proving initial-interest confusion.
As the court observed, legal authorities are mixed about whether mattress shoppers and online shoppers should be deemed careful, sophisticated consumers. For instance, one court has found that mattress shoppers exercise a high level of care; another has found that, because mattresses are infrequent purchases, consumers enter the marketplace uneducated and vulnerable to brand confusion.
Similarly, courts have found that “surfing” online when shopping leaves one susceptible to confusion. Others believe online shopping provides for illuminating exploration of options.
The court therefore concluded that a jury question existed about the issue of consumer sophistication, making the pre-trial dismissal of the initial-interest confusion infringement claim improper. For the same reasons, the court held that the jury instruction requiring confusion at the time of purchase was incorrect. It reversed and vacated the infringement judgment and sent the case back to the trial court for further proceedings.
The court hits snooze
Although the court left no doubt as to the viability of an initial-interest confusion claim in the Eighth Circuit, it also took care to limit its holding. It made no comment on how such confusion might affect the analysis of remedies and damages.
