CHAPTER 11 - § 11.04

• Jurisdiction: United States

§ 11.04 NO LIKELIHOOD OF CONFUSION

As the Supreme Court has stated, likelihood of confusion is the "ultimate test" for trade dress infringement.¹⁰⁸ However, a trade dress infringement claim also involves two other essential elements—non-functionality and inherent distinctiveness—and successfully defending any one of the three elements will carry the day.¹⁰⁹ In this respect, the importance of the "likelihood of confusion" element may be overstated. Still, in appropriate cases, courts may dispose of an action on "likelihood of confusion" grounds without reaching issues of functionality or distinctiveness.¹¹⁰

The critical inquiry for likelihood of confusion is "whether the public is likely to be deceived or confused by the similarity of the marks [or trade dress]."¹¹¹ Yet the specific factors guiding this inquiry differ from circuit to circuit, with some overlap.¹¹² Chapter 9 listed by circuit those differing sets of factors, which include, but are not limited to, the DuPont factors,¹¹³ the Pignons factors,¹¹⁴ the Polaroid factors,¹¹⁵ the Lapp factors,¹¹⁶ and the Sleekcraft factors.¹¹⁷ Whichever factors are applied, they are to be "viewed from the perspective of the eye and mind of an ordinary purchaser."¹¹⁸ But who is the ordinary purchaser?

Perhaps not surprisingly, courts differ on their definitions of the ordinary purchaser. This is an important determination because a more sophisticated purchaser is less likely to be confused than a less sophisticated purchaser. However, "even sophisticated customers may still be confused."¹¹⁹ Unfortunately, a defendant is at the mercy of the particular court's jurisprudence in this regard. Over a century ago, the Supreme Court referred to the "ordinary purchaser in the exercise of ordinary care and caution in such matters," but has not explicitly commented further since then.¹²⁰

Thus, courts quibble over where to draw the line. The Sixth Circuit suggested a slightly less stringent standard, stating that "it is the casual or ordinary purchaser who must be protected."¹²¹ The Fourth Circuit interpreted that same language to mean that the "incautious, the ignorant and the unthinking buyer must also be protected."¹²² The Seventh Circuit held consumers to a higher standard, refusing "to protect the negligent and inattentive purchaser from confusion resulting from indifference."¹²³ The Second Circuit, however, rejected this standard, reasoning that "[w]hy [inattentive buyers] should be deemed more legitimate game for a poacher than his careful buyers, it is hard to see, unless it be on the ground that he should have made his mark so conspicuous that it would serve to hold even the most heedless. Surely that is an inadequate defence."¹²⁴ Once the characteristics of the purchaser are known, a defendant must wield the applicable factors in a manner refuting any alleged confusion among consumers.

Increasingly, plaintiffs are using surveys to demonstrate actual confusion.¹²⁵ In fact, some courts point to the absence of survey evidence as weighing against likelihood of confusion.¹²⁶ However, defendants should not rely on the absence of a survey to win the day; they should commission their own survey to show a lack of confusion.¹²⁷ Besides the qualities of an ordinary purchaser, courts also differ on the percentage of confusion necessary to demonstrate likelihood of confusion. For example, some courts hold that confusion levels between 15 to 20 percent are sufficient.¹²⁸ Others hold that confusion levels as low as 11 percent are sufficient to evidence actual confusion.¹²⁹

When facing a plaintiff's survey showing confusion levels above 10 percent, the defendant should attack the survey through either expert testimony, a competing survey, or both. For example, in Beverage Marketing v. South Beach Beverage, the plaintiff proffered a survey as evidence of actual confusion in a dispute over bottles with similar trade dress.¹³⁰ Significantly, however, the plaintiff left the rival bottler's label off the bottle while administering the survey.¹³¹ The district court seized on this fact in criticizing the survey result, and the Second Circuit affirmed a finding of no likelihood of confusion:

Comparing the bottles, with the labels properly on them, unlike plaintiffs' survey comparison of the bottles with that very significant element of their trade dress removed, the Court holds that a reasonable jury properly considering the aforementioned factors, could not find a likelihood of confusion.¹³²

Thus, a defendant should carefully scrutinize any surveys proffered in trade dress litigation. The format of the survey, the characterization of the items at issue, the presentation of the trade dress, and the conclusions drawn from the survey responses are all fair game. In many cases, a plaintiff may not...