By: Doug Mondell
The concept of “initial interest confusion” is exactly what its name implies it is—confusing. This doctrine under trademark law made its debut in the 1970s as a remedy for trademark infringement. However well intentioned its creators envisioned it to be, it’s a doctrine that courts across the country are continuing to struggle with until this day. Most notably, in July and October of 2015, the Court of Appeals for the Ninth Circuit had a run-in with initial interest confusion that resulted in the same three-judge panel of the Ninth Circuit reversing their own decision.
Multi Time Machine, Inc. (“MTM”), a manufacturer of tactical watches called “Special Ops,” brought the suit against online retail giant Amazon.com, Inc. (“Amazon”) claiming that Amazon was confusing customers who were interested in purchasing MTM watches. If a customer were to go to Amazon’s website and search for “MTM Special Ops watches,” they would be met with a number of other competing watches made by other manufacturers. The kicker here, however, is that Amazon does not sell MTM watches because MTM does not choose to sell their watches through Amazon. MTM believed that Amazon should be required to disclaim the fact that they do not sell MTM watches if a customer specifically searched for them. However, if a customer did specifically search for MTM watches on Amazon, the results they would be shown explicitly listed the name of the manufacturer of the watch, which would not be MTM.
The District Court for the Central District of California granted summary judgment in favor of Amazon. The trial judge found that no reasonable consumer would think that they were buying an MTM watch from Amazon when they were, in fact, buying the watch of one of MTM’s competitors. MTM appealed to the Court of Appeals for the Ninth Circuit. The Ninth Circuit’s majority opinion ruled that a trier of fact could possibly find that Amazon is confusing customers, and the Ninth Circuit reversed the grant of summary judgment and remanded the case. In an irregular move, two of the three judges on the original panel decided to grant Amazon’s petition for rehearing. Then, even more irregularity ensued. One of the judges who found in favor of MTM changed positions and found for Amazon. Thus, the majority opinion became the minority opinion and vice versa. The new majority opinion agreed with the trial court that the way Amazon labels its products is clear, listing the manufacturer of the watch and supplying a picture of the watch, and a reasonable internet shopper would not be confused about the product they were purchasing. In short, Amazon is not responsible for contributing to “initial interest confusion.”
How is the doctrine of initial interest confusion so convoluted that a United States Court of Appeals cannot get their decision right the first time around? The main reason seems to be that courts all around the country are looking to different elements surrounding the alleged trademark infringement to determine if initial interest confusion exists. The International Trademark Association (“INTA”) suggests that courts only examine whether or not initial interest confusion exists in the cases before them, but makes no further analysis. INTA believes that rather than creating a completely new doctrine, courts should instead use the elements found in the “likelihood of confusion” doctrine. The likelihood of confusion doctrine looks at elements such as how thorough the consumer is in making the purchase of that product, whether the defendant had the desire to cause confusion, and how comparable the two products are to each other. It seems that these elements could be used successfully no matter at what time during the purchase process the plaintiff claims the trademark infringement occurred. In all honesty, does it matter when the infringement occurred? The important point is that there is already a test in place that can be used. But, then again, maybe the courts enjoy creating their own confusion.
Doug is a Staff Member of the Journal of High Technology Law. He is a current 2L at Suffolk Law concentrating in Trial and Appellate Advocacy. He graduated from The Ohio State University in 2011 with a B.A. in International Studies.