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Actual Details to Prove Actual Confusion

Posted by Thomas P. Howard | Jan 10, 2022 | 0 Comments

By James Juo.

“Evidence of actual confusion, where it exists, would of course be highly probative of a likelihood of confusion” with respect to a trademark. Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 2020 USPQ2d 10914, at *19 (TTAB 2020), aff'd in relevant part, vacated in part, 17 F.4th 129 (Fed. Cir. 2021) (citing Edom Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1553 (TTAB 2012)). “The existence of actual confusion is normally very persuasive evidence of likelihood of confusion and undercuts any possible claim that the marks are so dissimilar that there can be no likelihood of confusion.” Id.; see also King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1091 (10th Cir. 1999) (actual confusion is often considered the best evidence of likelihood of confusion); Water Pik, Inc. v. Med-Sys., Inc., 726 F.3d 1136, 1144 (10th Cir. 2013) (“such empirical data can be a reality check on the more theoretical analysis under the other factors”).

Evidence of actual confusion requires specificity and details about the actual circumstances of the confusion with respect to the trademark. In Mahender Sabhnani v. Mirage Brands, LLC, Cancellation No. 92068086 (TTAB Dec. 20, 2021), the senior user was unable to identify any caller or specifically date any of the 30 or more calls allegedly received from confused callers. The TTAB found such testimony “too lacking in detail to demonstrate actual confusion.” Harry Winston, 111 USPQ2d at 1443; see also Brooklyn Brewery, 2020 USPQ2d 10914, at *25 (“Courts and leading trademark treatises consistently note that relatively imprecise averments of employees of parties in whose interest it is to prove confusion that the employees have dealt with confused consumers is, without further corroboration, generally not entitled to much weight.” (citations omitted)).

Moreover, inquiries as to whether two different companies are related “do not demonstrate confusion [but] rather … that the individuals underst[ood] that the companies may be different entities.” Brooklyn Brewery, 2020 USPQ2d 10914, at *25 (citing Mini-Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1475 (TTAB 2016); Couch/Braunsdorf Affinity, Inc. v. N. Atl. Operating Co., 110 USPQ2d 1458, 1479 (TTAB 2014) (email to petitioner from one of its prospective customers referencing another email from a third party and asking “Is this the same company?” found not to be evidence of actual confusion because “it indicates the prospective customer suspected that there were two different companies”); Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1334 (TTAB 1983) (inquiries as to corporate affiliations are not evidence of actual confusion because, without more, they “indicate that these persons were aware that [the companies at issue] were two different entities”); Elec. Water Conditioners, Inc. v. Turbomag Corp., 221 USPQ 162, 164 (TTAB 1984) (“That questions have been raised as to the relationship between firms is not evidence of actual confusion of their trademarks.”)). See also Chutter, Inc. v. Great Mgmt. Grp., LLC, 2021 USPQ2d 1001, at *45-46 (TTAB 2021) (half-dozen inquires over 14 years to the effect that “I know there's a restaurant by this name out in California, do you have anything to do with it” found to “have little probative value because they are ambiguous and do not clearly provide evidence of consumers who are confused about the source of the services”). But see Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1030 & n.148 (TTAB 2015), aff'd per curiam, 652 F. App'x 971 (Fed. Cir. 2016) (“Instances of people inquiring of affiliation between the parties [are], at best, much less probative” than other forms of actual confusion in the record, but were given some weight in the context of other more credible evidence of actual confusion); Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1443 (TTAB 2014) (inquires as to affiliation “are sometimes interpreted as an indication that the inquirer is alert to the differences between the marks and skeptical of any relationship between them,” but were rejected because “we find the testimony relating to these incidents to be too lacking in detail to demonstrate actual confusion.”).

Conversely, the absence of any reported instances of confusion might be meaningful if the record indicates appreciable and continuous use of the respective trademarks “for a significant period of time in the same markets.” Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff'd, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011) (citing Gillette Can. Inc. v. Ranir Corp., 1768, 1774 (TTAB 1992)). “In other words, for the absence of actual confusion to be probative, there must have been a reasonable opportunity for confusion to have occurred.” Id. This requires consideration of “actual market conditions.” Id.

In Mahender Sabhnani, although the marks were used concurrently for about four years—one party only had a few online sales, whereas the other party had significant sales in retail stores. The TTAB concluded there has not “been a reasonable opportunity for confusion to have occurred.”

The trademark attorneys at Thomas P. Howard, LLC are experienced in the prosecution of trademark applications before the USPTO, as well as in enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.

About the Author

Thomas P. Howard

Thomas Howard is an experienced trial lawyer that handles intellectual property litigation nationwide, including copyright, trademark, trade secret and patent litigation, as well as complex civil litigation, including breach of contract, interference with contract, breach of fiduciary duty, conspiracy, fraud and fraudulent transfer of assets.


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