Multifactors, multiconfusion? Refining "likelihood of confusion" factors for reverse-confusion trademark infringement claims to achieve more consistent and predictable results.

• Author: Mott, Christina P.

1. INTRODUCTION

   On the surface, trademark law protects trademarks, defined as any "word, logo or package design, [or some combination thereof,] used by a manufacturer or merchant to identify its goods [or services] and distinguish them from others." (2) Typical trademark infringement cases involve a "senior" trademark owner seeking to prohibit a subsequent, "junior" user from using the same or similar mark. (3) On a deeper level, however, trademarks also serve as objective, goodwill symbols of consumer satisfaction, representing and reinforcing to the public a distinctive good or service. (4) "In trademark law, the question is always of consumer perception in the marketplace rather than judicial perception in the courtroom." (5)

   The Lanham Act (the Act) governs federal trademark protection, providing for nationwide protection of a trademark against threats, such as the unauthorized reproduction or imitation of a trademark that is "likely to cause confusion, or to cause mistake, or to deceive," and creates two statutory bases for any confusion-based causes of action. (6) Under the Act, a trademark is "any word, name, symbol, or device ... used by a person, or ... which a person has a bona fide intention to use in commerce ... to identify and distinguish his or her goods ... from those manufactured or sold by others and to indicate the source of the goods...." (7) Case law and the Act identify four categories of terms that reflect a mark's eligibility for trademark registration and its deserved amount of protection. (8) Regardless of the amount of protection a mark is eligible to receive, however, the fundamental question under confusion-based infringement actions is "whether there is any 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." (9)

   The most common trademark actions are known as forward-confusion cases and involve instances of a junior user infringing upon a senior user, creating an impression that the junior user's goods are the same goods as the senior trademark holder's. (10) The law for analyzing forward-confusion cases is well-established among the circuit courts; each circuit, however, has adopted its own individual, multipronged likelihood-of-confusion test for analyzing consumer confusion. (11) In recent years, courts have faced a growing trend of reverse confusion cases where a senior user is actually the smaller, weaker user, and is faced with a larger junior user poaching a mark that the senior user originally established. (12) while some circuit courts utilize a similar framework for forward-confusion and reverse-confusion cases, only recently have all circuits recognized the reverse-confusion phenomenon, and some have no framework or factors firmly in place to analyze reverse-confusion cases. (13) This deficiency can encourage parties to file suit and leverage a lack of precedent to their advantage, ultimately leading to diminished economic and judicial efficiency and increased forum shopping. (14)

   This Note will first examine the historical development and basic doctrines of general trademark law. (15) Part II.A will describe the goals of trademark protection, analyzing its evolution from a tort-based theory of fraud prevention into a property-based notion of trademark rights; the functions of trademarks; and the underlying intentions of Congress in passing the Act. (16) Part II.B will look at traditional, forward-confusion trademark infringement analysis and protectibility of trademarks. (17) Part II.C will track the development and application of each circuit's multifactor likelihood-of-confusion test that is used to answer the principal question in federal trademark infringement cases: does the defendant's trademark confuse consumers as to the true source of the defendant's product due to its similarity to the plaintiffs mark? (18) Part II.D discusses the development and divergence of reverse-confusion analysis from the more common forward-confusion instances and the current state of the fragmented analytical framework among the circuits. (19) Part III will analyze the inherent difficulties present in the disjointed circuit framework for both forward- and reverse-confusion cases. (20) Finally, this Note will advocate for a more appropriate framework to analyze reverse-confusion cases, based upon modifying--or even eliminating--certain current forward-confusion multifactor schemes that weigh factors considering the commercial strength of the junior user's mark, the inherent strength or protectibility of the senior user's mark, and whether the junior user exhibited bad faith more greatly than others. (21)

2. HISTORY

   1. Trademark Foundations in Antiquity, the Middle Ages, and English Common Law Influencing the Lanham Act

      Using marks to identify and distinguish one's work originated in antiquity.22 Trademark use began more than 3500 years ago, recorded in archeological artifacts, such as potters' marks to identify the source of fired clay pots.23 A potter's mark, "a scratchy form of commercial signature," identified the potter with the quality of his craftsmanship to all who saw his work.24 The earliest instance of pottery of discernible origin is found on Chinese pots exhibiting two types of marks identifying the Emperor of the period and the maker of the pottery, and dating to the reign of Chinese Emperor Hoang-To, approximately 2700 B.C., some twelve centuries before the introduction of ceramics to Europe. (25)

      The Hindus are credited with likely influencing the beginnings of European pottery, demonstrated by the many emblems affixed to Hindu merchandise found throughout the eastern Mediterranean region. (26) Even temple excavations at Nineveh and throughout Egypt reveal common building bricks imprinted with names of their supposed manufacturers, often accompanied by additional, intricate pictures indicating the individual brick's maker. (27) Moreover, Greek pottery, which typically showed pictorials of the adventures of classical heroes, also bore marks signifying the origin of the pottery on the base of the pots, and almost all Grecian sculptures displayed inscriptions of the sculptors' names. (28) In addition to the maker's name, cup handles used at the Ceramicus of Athens often revealed symbolic marks such as oil jugs, bees, and lions' heads. (29)

      Roman relics and everyday objects--including pottery, stone, lead pipes, marble, glassware, bronze instruments, gold and silverware, knives and other iron articles, gems, and even bread--also display various distinguishing inscriptions. (30) Scholars infer that these marks signify a level of governmental regulation aimed at preserving quality workmanship, punishing faulty workmanship, and enhancing personal responsibility for inferior goods. (31) Not dissimilarly, Mediterranean culture in the sixth- and seventh-centuries B.C. widely used trademark-bearing amphorae in the wine and oil trade, and many of these vessels bore incised marks, or graffiti, on the shoulder or the neck, ranging from full owner's marks or names to single letters or non-alphabetic decorative shapes. (32)

      In the Middle Ages, artisans widely used trademarks on armor, cloth, cutlery, and pewterware, but definitive trademark law did not develop until much later. (33) Merchants also historically used marks to demonstrate ownership of physical goods, much in the way that ranchers use cattle brands to identify their cattle, and using marks to indicate ownership of goods was particularly important for owners whose goods moved in transit, as those marks often allowed owners to claim goods that were lost. (34) Representative of the deference to these marks, a statute of Parma, allegedly better tailored and concise than the U.S. Trademark Act, protected against

      frauds which are or may be committed upon [guilds and artisans in this state];--that no person in the trade or guild shall use the mark of any other person in such trade or guild, nor place such mark, or a similar one, upon knives or swords; and if any person in such guild has continuously used a mark ... for ten years, and any other person is found to have used, within one or two years, the same mark or an imitation thereof, whether stamped or formed in any other way, the latter shall not in future be allowed to use such mark ... under penalty of ten pounds of Parma for each and every offense, and that regardless of any compromise or award of arbitrators which may have been made. (35) Even if one loaned a mark to another, the loaner and loanee would be in violation of the public ordinances and good-faith practices of the day. (36)

      The earliest reported case dealing with unauthorized replication of another's mark--the improper use of a clothier's mark--dates back to 1584, but was not widely known until it was discussed in the dictum of the 1618 Southern v. How Common Pleas decision, which involved the sale of counterfeit jewels. (37) In the most widely cited report of the clothier's case, appearing in Popham's Reports, and in the dictum discussion appearing in Southern v. How, a reputed clothier--J.G.--brought an action against another clothier--Sandforth--for applying the "same mark to his ill-made cloth on purpose to deceive him." (38) The reliability of Popham's account is repeatedly questioned; however, his characterization of Southern and J.G. v. Sandforth played a prominent role in early English law. (39) Many judges deciding trademark cases in the eighteenth and nineteenth centuries went so far as to rely on Popham's report of J.G. v. Sandforth as standing for the proposition that cases based on use of another's mark could be brought as actions sounding in the common-law tort of deceit. (40) Ultimately, Southern demonstrates a "most fragile link between the Middle Ages and the modern commercial law of trademarks," and signifies that trademarks still remained centered in the guilds and...