September 18, 2006
Online Use Subcommittee of the Internet Committee
WHEREAS, initial interest confusion is a doctrine which has been developing in U.S. trademark cases since the 1970s, which allows for a finding of liability where a plaintiff can demonstrate that a consumer was confused by a defendant’s conduct at the time of interest in a product or service, even if that initial confusion is corrected by the time of purchase;
WHEREAS, the initial interest confusion doctrine has been used more frequently since the development of the Internet, in the context of domain name disputes, metatag use, and keyword advertising, and courts seem to apply different standards to cases of initial interest confusion on the Internet than they do in the bricks and mortar world;
WHEREAS, existing case law has developed in an inconsistent fashion, with no definitive test for initial interest confusion, and no clarity as to the factors a court should consider in deciding initial interest confusion cases; and
WHEREAS, clarity and certainty in the initial interest confusion doctrine would benefit both plaintiffs and defendants in trademark infringement cases by bringing greater predictability to such litigation.
BE IT RESOLVED, that INTA recommends that courts recognize that the initial interest confusion doctrine is not separate from a likelihood of confusion analysis. It is simply a timing question as to when confusion occurs, which recognizes confusion that is dispelled before an actual sale occurs may be actionable. Courts should consider initial interest confusion claims, whether in brick and mortar cases or Internet cases, under traditional likelihood of confusion tests and should consider each element of such tests, as well as related defenses, based on the facts of each case.
The Online Trademark Use Subcommittee recommends that the INTA Board of Directors adopt the preceding resolution concerning initial interest confusion, a trademark cause of action that has developed in the United States and may emerge in other jurisdictions.
Clarity and certainty are missing from the existing case law on initial interest confusion, which allows for liability where a plaintiff can demonstrate that a customer was confused by a defendant’s conduct at the time of interest in a product or service, even if that initial confusion is corrected by the time of purchase. Since its creation in the 1970s, the doctrine has been expanding. There is a split in the circuits – and within circuits – regarding what elements must be shown to establish initial interest confusion. Many courts seem to be using the doctrine to find liability for perceived bad acts without engaging in any analysis – they merely conclude there is initial interest confusion and therefore infringement has occurred.
The subcommittee believes that courts should engage in traditional likelihood of confusion analysis in cases of initial interest confusion, rather than creating a new doctrine or treating initial interest confusion as a substitute for actual confusion in the likelihood of confusion analysis. To put it another way, the subcommittee believes that confusion is confusion is confusion, whether it is prior to or at the point of sale, and that the same likelihood of confusion factors should be used in all instances.
In the course of the deliberations in the subcommittee, alternate viewpoints were presented. At first, some members believed that the initial interest confusion doctrine should be eliminated altogether, arguing that since the confusion is alleviated by the time of purchase, there is no harm to be remedied. Others believed that a separate doctrine made sense, and advocated for a bad faith requirement to limit the doctrine to the egregious cases of bait and switch. However, on further consideration, the subcommittee decided that creating a new doctrine was not advisable. The standard likelihood of confusion doctrine would address the wrongs the members were concerned about while limiting the application of remedies when not appropriate, without the difficulty of establishing a new doctrine.
The subcommittee was able to reach consensus that the standard likelihood of confusion analysis is the best way to deal with cases of initial interest confusion. The likelihood of confusion analysis is flexible enough to handle both cases involving actual confusion or likelihood of confusion at the point of sale and those cases involving pre-sale confusion claims. Courts are used to applying a multi-factor test to determine whether there is trademark infringement. While trademark cases are always fact-specific and the factors may be weighed differently from one case to another, the fact that there is a test with several factors which would be applied to initial interest confusion cases brings much-needed structure and clarity to these cases, as opposed to the current chaotic nature of the case law. Therefore, trademark owners and users of third party trademarks can better evaluate their own and competitors’ uses of trademarks and can know what factors will be considered by the courts in order to determine trademark infringement.
The report that follows will explain the deliberations of the subcommittee in some detail and address matters that were raised during the course of the analysis.
Full Report on Initial Interest Confusion Resolution